Petition for Writ of Certiorari — Gilbert P. Hyatt, et al., Petitioners v. Andrei Iancu, Director, United States Patent and Trademark Office
Supreme Court briefApr 10, 2019
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No. _____
IN THE
Supreme Court of the United States
___________
GILBERT P. HYATT and AMERICAN ASSOCIATION FOR
EQUITABLE TREATMENT, INC.,
v.
Petitioners,
ANDREI IANCU, in his official capacity as Director of
the U.S. Patent and Trademark Office,
___________
Respondent.
On Petition for a Writ of Certiorari to the
United States Court of Appeals
For the Federal Circuit
___________
PETITION FOR WRIT OF CERTIORARI
___________
ANDREW M. GROSSMAN
Counsel of Record
MARK W. DELAQUIL
BAKER & HOSTETLER LLP
1050 Connecticut Ave., N.W.
Washington, D.C. 20036
(202) 861-1697
agrossman@bakerlaw.com
QUESTION PRESENTED
Section 134 of the Patent Act provides that an “applicant for a patent, any of whose claims has been
twice rejected, may appeal from the decision of the
primary examiner to the Patent Trial and Appeal
Board.” Section 6 provides, in turn, that the “Appeal
Board shall…on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134.” Interpreting those provisions’ predecessors, U.S. ex rel.
Steinmetz v. Allen held that mandamus was the appropriate remedy when the Patent and Trademark
Office refused to allow an appeal to proceed to the Appeal Board’s predecessor. 192 U.S. 543 (1904). A century later, the PTO adopted a rule, Manual of Patent
Examining Procedure (“MPEP”) § 1207.04, authorizing patent examiners to block an applicant’s appeal
from ever reaching the Appeal Board by reopening patent prosecution to enter additional rejections.
Accordingly, the question presented is:
Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.
ii
PARTIES TO THE PROCEEDING
AND RULE 29.6 STATEMENT
Petitioners Gilbert P. Hyatt and American Association for Equitable Treatment, Inc., were Appellants
below. American Association for Equitable Treatment, Inc., has no parent company, and no publicly
traded corporation owns 10 percent or more of any of
its stock.
Respondent Andrei Iancu, in his official capacity as
Director of the U.S. Patent and Trademark Office was
an Appellee below.
iii
TABLE OF CONTENTS
PETITION FOR WRIT OF CERTIORARI ............... 1
OPINIONS BELOW................................................... 4
JURISDICTION ......................................................... 4
STATUTES AND RULE INVOLVED ....................... 4
STATEMENT OF THE CASE ................................... 5
A.
Patent Prosecution and Appeal ...................... 5
B.
The PTO Adopts MPEP § 1207.04 To
Block Applicant Appeals by Reopening
Prosecution ...................................................... 7
C.
The PTO Denies Mr. Hyatt’s Petitions
Challenging the Lawfulness of MPEP
§ 1207.04 .......................................................... 8
D.
Lower Court Proceedings .............................. 10
REASONS FOR GRANTING THE PETITION ...... 11
I.
The Federal Circuit’s Decision
Contravenes the Patent Act and Ignores
This Court’s Decision in Steinmetz............... 12
A. The Patent Act Confers Meaningful
Appeal Rights ........................................... 12
B. Steinmetz Rejects the PTO’s Claimed
Authority to Block Appeals ..................... 16
II. The Question Presented Is Exceptionally
Important and Frequently Recurring .......... 17
III. This Case Is an Ideal Vehicle To Assess
the Lawfulness of MPEP § 1207.04 .............. 20
CONCLUSION ......................................................... 22
iv
TABLE OF APPENDICES
Appendix A: Court of Appeals Opinion
(Fed Cir. Sept. 24, 2018) .................................. App. 1
Appendix B: District Court Opinion
(D. Nev. Feb. 17, 2017)................................... App. 23
Appendix C: Court of Appeals Order
Denying Rehearing and Rehearing En
Banc (Fed. Cir. Jan. 10, 2019) ....................... App. 28
Appendix D: PTO Decision on Petition
for Rulemaking (Dec. 10, 2015) ..................... App. 31
Appendix E: PTO Decision on Petition
for Rulemaking (Sep. 19, 2014) ..................... App. 67
Appendix F: Relevant Statutory and
Regulatory Provisions .................................... App. 74
v
TABLE OF AUTHORITIES
CASES
In re Hengehold, 440 F.2d 1395 (C.C.P.A. 1971) .... 16
Lopez v. Davis, 531 U.S. 230 (2001) ........................ 15
McNary v. Haitian Refugee Ctr., Inc.,
498 U.S. 479 (1991) ............................................... 15
SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) ..... 15
United States v. Wonson, 28 F. Cas. 745
(C.C.D. Mass. 1812) (No. 16,750) ......................... 14
United States ex rel. Steinmetz v. Allen,
192 U.S. 543 (1904) ....................................... passim
Util. Air Reg. Grp. v. EPA,
134 S. Ct. 2427 (2014) ........................................... 13
CONSTITUTIONAL PROVISIONS, STATUTES, AND RULES
U.S. Const., Art. I, § 8, cl. 8. ...................................... 5
28 U.S.C. § 1295 ................................................. 20–21
28 U.S.C. § 1331 ....................................................... 10
28 U.S.C. § 1338 ....................................................... 10
35 U.S.C. § 6 ..................................... 12, 13, 14, 17, 21
35 U.S.C. § 101 ........................................................... 5
35 U.S.C. § 102 ........................................................... 5
35 U.S.C. § 111 ........................................................... 5
35 U.S.C. § 112 ........................................................... 5
vi
35 U.S.C. § 131 ........................................................... 5
35 U.S.C. § 132 ........................................................... 6
35 U.S.C. § 134 ................................................. passim
35 U.S.C. § 141 ..................................................... 7, 15
35 U.S.C. § 145 ..................................................... 7, 15
37 C.F.R. § 1.104 ...................................................... 20
37 C.F.R. § 1.111 ........................................................ 6
37 C.F.R. § 41.31 ........................................................ 6
37 C.F.R. § 41.35 ........................................................ 8
37 C.F.R. § 41.37 ........................................................ 6
37 C.F.R. § 41.39 ........................................................ 7
37 C.F.R. § 41.50 ........................................................ 7
MPEP § 1207.04 ............................................... passim
MPEP § 1208.02 ......................................................... 7
MPEP § 2103.I.......................................................... 20
OTHER AUTHORITIES
Black’s Law Dict. (10th ed. 2014) ............................ 14
Matthew Bultman, Fed. Circ. Preserves Rule
Inventors Say Can Be a Burden, Law360, Oct.
5, 2018 ...................................................................... 3
Chad Gilles, 30% of Appeal Briefs Result in an
Allowance or Reopening of Prosecution,
BigPatentData, Sep. 5, 2018 ............................. 3, 18
PETITION FOR WRIT OF CERTIORARI
This case concerns the Patent and Trademark Office’s dubious claim of authority to block patent applicants from exercising their statutory rights to administrative review and judicial review of adverse decisions on their patent applications. Until the Federal
Circuit’s decision in this case, the prevailing view was
that Congress meant what it said when it provided in
the Patent Act that an “applicant for a patent, any of
whose claims has been twice rejected, may appeal
from the decision of the primary examiner to the Patent Trial and Appeal Board” and that the Appeal
Board “shall…on written appeal of an applicant, review adverse decisions of examiners upon applications for patents.” 35 U.S.C. §§ 134(a), 6(b)(1). Yet the
decision below upheld a PTO rule, contained in Manual of Patent Examining Procedure (“MPEP”)
§ 1207.04, that permits the PTO to unilaterally terminate any appeal by reopening patent prosecution—
that is, to block the appeal from ever reaching the
Board by resuming the pre-appeal examination process to enter a third or subsequent rejection. The
PTO’s choosing to allow an appeal to proceed to the
Board is, in the Federal Circuit’s view, just “another
condition that must be satisfied before an appeal
reaches the Board,” like paying the appeal fee.
Pet.App.20.
That decision—which is now the law of the land,
given the Federal Circuit’s exclusive jurisdiction over
questions of patent law—is at odds with the statutory
text. The Act, after all, vests appeal rights at a specific
2
time, following a second rejection, irrespective of
whether the PTO might wish to enter additional rejections before an applicant can obtain Board review
and, following the Board’s decision, judicial review.
And the Act provides a right to “appeal,” not just to
file a piece of paper labeled “Notice of Appeal” that the
PTO can choose to honor or disregard at its discretion.
That is, in fact, how this Court interpreted the Act
in U.S. ex rel. Steinmetz v. Allen, holding that mandamus was the appropriate remedy when the PTO refused to allow an appeal to proceed to the Appeal
Board’s predecessor. 192 U.S. 543, 563–66 (1904). The
PTO is now reasserting that same discredited view of
its own authority in MPEP § 1207.04. And the Federal Circuit, ignoring Steinmetz, upheld it.
In so doing, the Federal Circuit broke from a century of settled law to sanction, for the first time ever,
a device that the PTO increasingly wields to defeat
applicants’ appeal rights. For years, the PTO recognized applicants’ right to proceed with appeals even
when examiners proposed reopening prosecution to
enter additional rejections. Only in 2005, having by
all indications forgotten about Steinmetz, did it reverse course by adopting MPEP § 1207.04.
That action brought serious consequences. Over the
past decade, the PTO’s use of MPEP § 1207.04 has exploded. In recent years, the PTO has blocked appeals
in nearly 15 percent of cases where an applicant has
filed an appeal brief and in as many as 24 percent of
3
such cases arising from certain technology groups.1 In
addition to distorting the patent-prosecution process,
the PTO’s use of MPEP § 1207.04 directly imposes untold costs, burdens, and delays on the thousands of
applicants whose appeals are blocked each year. And
it indefinitely delays their right to obtain judicial review, particularly where the PTO has blocked multiple appeals in a single application. As one practitioner
put it, “They only have to do it a few times before they
wear the applicant down and they give up.”2
That is not what Congress intended when it gave
applicants the right to appeal adverse decisions. It
contravenes governing legal authority. And it is subject to abuse, such as when the PTO terminated 80
appeals, some of which had been pending for nearly a
decade, filed and fully briefed by Petitioner Gilbert P.
Hyatt.
This Court’s review is required to enforce its longstanding precedent and to resolve a fundamental
question of patent procedure that is of exceptional importance to the operation of the patent system.
1 Chad Gilles, 30% of Appeal Briefs Result in an Allowance or
Reopening of Prosecution, BigPatentData, Sep. 5, 2018,
https://bigpatentdata.com/2018/09/30-of-appeal-briefs-result-inan-allowance-or-reopening-of-prosecution/.
2 Matthew Bultman, Fed. Circ. Preserves Rule Inventors Say Can
Be a Burden, Law360, Oct. 5, 2018, https://www.law360.com/
ip/articles/1089917/fed-circ-preserves-rule-inventors-say-canbe-a-burden.
4
OPINIONS BELOW
The Federal Circuit’s opinion is reported at 904
F.3d 1361 and reproduced at Pet.App.1. The opinion
of the District Court for the District of Nevada is unpublished and reproduced at Pet.App.23.
JURISDICTION
The judgment of the court of appeals was entered
on September 24, 2018. A timely petition for rehearing and rehearing en banc was denied on January 10,
2019. Pet.App.28. This Court has jurisdiction pursuant to 28 U.S.C. § 1254(1).
STATUTES AND RULE INVOLVED
Section 6(b) of the Patent Act, 35 U.S.C. § 6(b), provides, in relevant part:
The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review
adverse decisions of examiners upon applications for patents pursuant to section 134(a)[.]
Section 134(a), 35 U.S.C. § 134(a), provides:
An applicant for a patent, any of whose claims
has been twice rejected, may appeal from the
decision of the primary examiner to the Patent
Trial and Appeal Board, having once paid the
fee for such appeal.
MPEP § 1207.04 provides, in relevant part:
The examiner may, with approval from the supervisory patent examiner, reopen prosecution
5
to enter a new ground of rejection in response
to appellant’s [appeal] brief.
The complete text of the rule, as well as other relevant provisions, is reproduced at Pet.App.91; see also
Pet.App.74.
STATEMENT OF THE CASE
A.
Patent Prosecution and Appeal
The Constitution empowers Congress to “promote
the Progress of Science and useful Arts” by securing
to “Inventors the exclusive Right to their…Discoveries.” U.S. Const., Art. I, § 8, cl. 8. In exercise of that
power, Congress enacted the Patent Act of 1952 so
that a person who “invents or discovers any new and
useful process, machine, manufacture, or composition
of matter, or any new and useful improvement
thereof, may obtain a patent therefor….” 35 U.S.C.
§ 101. Under the Act, a patent applicant whose invention is novel and non-obvious “shall be entitled to a
patent.” 35 U.S.C. § 102(a).
The Patent Act prescribes the process for an inventor to obtain a patent. The “prosecution” stage of the
process begins when an inventor files a patent application with the PTO containing a written description
of the invention, drawings, and one or more claims
that define the invention for which a patent is sought.
35 U.S.C. §§ 111–12. A patent examiner then reviews
the application to determine if “the applicant is entitled to a patent under the law.” 35 U.S.C. § 131. If he
is, the PTO “shall issue a patent therefor.” Id.
6
Of course, not all applications and claims are issued. When an examiner rejects a claim, he must notify the applicant of the grounds for that determination and provide the applicant with “such information
and references as may be useful in judging…the propriety of continuing the prosecution of his application.” 35 U.S.C. § 132(a). At that point, the applicant
has the right to “request reconsideration or further
examination” by filing a “reply” that “present[s] arguments pointing out the specific distinctions believed
to render the claims…patentable.” 37 C.F.R.
§ 1.111(a)(1), (b). In conjunction with his reply, the
applicant may also amend his application. 35 U.S.C.
§ 132(a); 37 C.F.R. § 1.111(a)(1). Once the reply has
been filed, “the application shall be reexamined.” 35
U.S.C. § 132(a).
A second rejection—often referred to as a “final rejection,” although not final agency action—entitles
the applicant to “appeal from the decision of the primary examiner to the Patent Trial and Appeal
Board.” 35 U.S.C. § 134(a). Among the Appeal Board’s
“duties” is that it “shall…on written appeal of an applicant, review adverse decisions of examiners upon
applications for patents pursuant to section 134(a).”
35 U.S.C. § 6(b)(1).
In most respects, patent appeals resemble appeals
in federal court. The applicant initiates the appeal by
filing a notice of appeal, 37 C.F.R. § 41.31(a), and then
files an initial “appeal brief” in which he presents
“[t]he arguments…with respect to each ground of rejection.” 37 C.F.R. § 41.37(a), (c)(1). The examiner
7
“may, within such time as may be directed by the Director, furnish a written answer to the appeal brief,”
referred to as the “examiner’s answer.” 37 C.F.R.
§ 41.39(a). The patent applicant then may file a reply
brief. 37 C.F.R. § 41.41. At that point, the matter is
ripe for decision by the Appeal Board. 37 C.F.R.
§ 41.50.
The appeal culminates in final agency action when
the Appeal Board issues its decision. Only after the
Appeal Board acts may an applicant obtain judicial
review, by either appealing its decision to the Federal
Circuit or filing a civil action to obtain a patent in the
Eastern District of Virginia. 35 U.S.C. §§ 141(a), 145.
B.
The PTO Adopts MPEP § 1207.04 To
Block Applicant Appeals by Reopening
Prosecution
Until 2005, the PTO recognized the right of an applicant to appeal following a second rejection. Although its procedures catalogued in the Manual of Patent Examining Procedure permitted examiners to
propose to reopen prosecution and enter additional rejections instead of filing an examiner’s answer, they
also permitted the applicant to disregard the examiner’s proposal and press forward with the appeal. See
MPEP § 1208.02 (Aug. 2001).
That changed in August 2005, when the PTO
adopted MPEP § 1207.04. It provides that an examiner need not file an answering brief at all. Instead,
the PTO may “reopen prosecution to enter a new
ground of rejection in response to appellant’s brief.”
8
The decision to reopen prosecution terminates the appeal, requiring the applicant to either respond to the
new rejections or attempt to “initiate a new appeal.”
Because no examiner’s answer is filed, the appeal is
never transmitted to the Board, and the Board renders no decision.3
Since adopting MPEP § 1207.04, the PTO has significantly expanded the circumstances in which an
examiner may reopen prosecution and thereby terminate an appeal. For example, an examiner may now
reopen prosecution based on a new ground of rejection
that would be appropriate to raise in the examiner’s
answer without terminating the appeal. Compare
MPEP § 1207.04 (8th ed., rev. 9, Aug. 2012), with
MPEP § 1207.04 (9th ed., rev. 1, Mar. 2014).
C.
The PTO Denies Mr. Hyatt’s Petitions
Challenging the Lawfulness of MPEP
§ 1207.04
Petitioner Gilbert P. Hyatt is an accomplished engineer, scientist, and inventor, with nearly 75 patents
to his name that cover technology from computer
memory architecture to sound and speech processing.
After the PTO employed MPEP § 1207.04 to terminate 80 of his appeals, Mr. Hyatt filed an Administra-
Under PTO regulations, jurisdiction over the application
passes to the Appeal Board only upon the filing of the reply brief
or expiration of the time to do so. 37 C.F.R. § 41.35(a). Accordingly, without an examiner’s answer, the appeal is never transferred to the Board.
3
9
tive Procedure Act rulemaking petition in 2014 demanding that the PTO either repeal it or declare it
unenforceable. The petition argued, among other
things, that MPEP § 1207.04 contravenes the requirements of the Patent Act regarding appeals. The Chief
Administrative Patent Judge denied Mr. Hyatt’s petition, stating that MPEP § 1207.04 is “not inconsistent” with the Act. Pet.App.72.
Mr. Hyatt then filed another rulemaking petition
requesting that the then-Acting Director of the PTO
review the initial denial and either repeal MPEP
§ 1207.04 or declare it invalid and unenforceable. The
PTO denied that petition, as well. Pet.App.66. Its denial reasoned that Section 6(b) is only an organizational provision that does not confer any right and
that Section 134(a) “simply affords an applicant the
right to file an appeal to the Board,” without “compel[ling] any particular result in that appeal” or even
requiring that it be heard by the Board. Pet.App.42–
43. The examiner’s decision not to block an appeal by
reopening prosecution is just another of the “various
requirements [placed] on an applicant in order to
have an appeal heard by the Board,” like paying the
appeal fee and filing a brief. Pet.App.43. And, in any
instance, patent examiners “possess an inherent ability to revisit their earlier patentability decisions,” irrespective of whether “an applicant has filed a Board
appeal.” Pet.App.45.
10
D. Lower Court Proceedings
Following the denial of his second petition, Mr. Hyatt and the American Association for Equitable Treatment, of which Mr. Hyatt is a member, brought suit
under the Administrative Procedure Act challenging
the PTO’s petition denials and the lawfulness of
MPEP § 1207.04.
The district court granted the PTO’s motion for
summary judgment, and denied the Petitioners’, holding that it lacked subject matter jurisdiction over the
action because the Patent Act vests exclusive jurisdiction to review Appeal Board decisions in the Eastern
District of Virginia and Federal Circuit. Pet.App.26
(citing 35 U.S.C. §§ 144, 145).
On appeal, the Federal Circuit reversed the district
court’s jurisdictional ruling but ruled for PTO on the
merits. The Petitioners’ APA challenge to the petition
denials, it held, fell within the district court’s jurisdiction for civil actions arising under federal law and for
actions raising a substantial question of patent law.
Pet.App.8 (citing 28 U.S.C. §§ 1331, 1338(a)). The jurisdictional statutes for patent appeals cited by the
district court were inapplicable because this action is
“not an appeal from an examiner’s rejection of [Mr.
Hyatt’s] applications,” but a routine “APA challenge[]
to federal agency actions” that was “completely separate from the patent examination process that culminates in final [Appeal Board] decisions.” Pet.App.10.
On the merits, the appeals court held that MPEP
§ 1207.04 does not conflict with the Patent Act. The
11
court reasoned that “an examiner’s decision not to reopen prosecution is another condition that must be
satisfied before an appeal reaches the Board.”
Pet.App.20. Nothing in the statute, it said, “suggests
the PTO cannot impose conditions on the [Appeal
Board’s] ability to reach the merits of an appeal or delay the appeal.” Pet.App.21. And if an applicant believes that the PTO is abusing that authority, it concluded, he can eventually file an APA undue-delay
suit. Id.
REASONS FOR GRANTING THE PETITION
Congress provided patent applicants the rights to
appeal adverse examiner decisions to the Appeal
Board and then to court, and the PTO claims authority in MPEP § 1207.04 to deny applicants those
rights. The decision below sanctions that rule, holding
that the PTO has authority to erect barriers to exercise of applicants’ appeal rights, up to and including
blocking appeals altogether, because the Patent Act
also permits it to condition appeals on ministerial acts
like paying the appeal fee and filing a brief. That decision conflicts with the statutory text, contravenes
this Court’s decision on the very same issue in
Steinmetz, and upsets the balance struck by Congress, which required applicants to endure only so
much back-and-forth prosecution with examiners before they have the right to seek independent review
from the Appeal Board and ultimately the courts. It
also has serious consequences for applicants, who are
increasingly being forced to bear the burden, cost, and
delay inherent in bringing and briefing statutorily-
12
authorized appeals only to have the PTO unilaterally
terminate them. This Court’s review is required to
rein in an agency that refuses to recognize a crucial
check on its own authority.
I.
The Federal Circuit’s Decision
Contravenes the Patent Act and Ignores
This Court’s Decision in Steinmetz
The Patent Act unambiguously confers on applicants a right to appeal following a second examiner
rejection and unambiguously requires the Appeal
Board to review examiner rejections. 35 U.S.C.
§§ 134(a), 6(b)(1). This Court held as much in U.S. ex
rel. Steinmetz v. Allen, 192 U.S. 543, 563–66 (1904),
finding that mandamus was the appropriate remedy
when, as here, the PTO denied its obligation to allow
an appeal to proceed to the appeal panel. The contrary
decision of the court below, which upheld the PTO’s
rule permitting it to block appeals at its sole discretion, contravenes both the statute and Steinmetz.
A.
The Patent Act Confers Meaningful
Appeal Rights
The statutory text clearly precludes the authority to
block appeals that the PTO asserts in MPEP
§ 1207.04. Section 134(a) provides that “[a]n applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the patent
examiner to the Patent Trial and Appeal Board.” 35
U.S.C. § 134(a). Section 6(b), in turn, states that
“[T]he Patent Trial and Appeal Board shall—(1) on
13
written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” 35 U.S.C. § 6(b). Taken together, those two provisions guarantee patent applicants the right to appeal examiner rejections to the
Appeal Board and therefore prevent the PTO from
blocking such appeals by reopening prosecution.
That conclusion is compelled by four features of the
statute. First, the vesting of an applicant’s appeal
right at a specific time, after any claim has been
“twice rejected,” reflects Congress’s decision to limit
how much back-and-forth examination an applicant
is required to endure before obtaining independent review. After a second rejection, the Act gives the applicant the choice to appeal, irrespective of whether the
PTO would prefer to extend prosecution with a third,
fourth, or even later round of rejections. Compare
Util. Air Reg. Grp. v. EPA, 134 S. Ct. 2427, 2445–46
(2014) (agency lacks authority to depart from “unambiguous numerical thresholds” set by Congress). The
Federal Circuit had nothing to say about this feature
of the statute, even though it contradicts the PTO’s
asserted authority in MPEP § 1207.04 to reopen prosecution so as to enter additional rejections beyond the
second before the applicant can reach the Board.
The second feature is Congress’s use of the word
“appeal.” That word has a well-established meaning
in the law that goes far beyond just filing a piece of
paper labeled “notice of appeal” that an agency is free
to disregard, as the PTO does when it invokes MPEP
§ 1207.04 to resume prosecution notwithstanding the
14
filing of an appeal. Justice Story’s explication of the
word’s meaning is as apt today as it was in his time:
“Appeal…is defined ‘ab inferioris judicis sententiâ ad
superiorem provocate:’ the removal of a cause from
the sentence of an inferior to a superior judge.” United
States v. Wonson, 28 F. Cas. 745, 748 (C.C.D. Mass.
1812) (No. 16,750); see also Black’s Law Dict. (10th ed.
2014) (defining an “appeal” as “[a] proceeding undertaken to have a decision reconsidered by a higher authority; esp., the submission of a lower court’s or
agency’s decision to a higher court for review and possible reversal”). The decision below, however, accepted the PTO’s “just-a-piece-of-paper” view of what
it means to appeal, holding that it was enough that
“[t]he PTO’s rules allow applicants to seek review of
examiners’ final rejections before a higher authority.”
Pet.App.21. No matter that MPEP 1207.04 empowers
the PTO to block that appeal from ever reaching any
higher authority—in the Federal Circuit’s view, the
PTO’s acquiescence in permitting an appeal is merely
a “condition” of exercising the right to appeal.
Pet.App.20.
Third is Congress’s command that the “Appeal
Board shall—on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” 35
U.S.C. § 6(b). It is difficult to conceive of any way that
Congress could more clearly have communicated that
applicants have the right to Board review: the statute
literally says that, when an applicant appeals pursu-
15
ant to Section 134(a), the Board “shall” conduct review. See, e.g., Lopez v. Davis, 531 U.S. 230, 241
(2001) (discussing the import of “legislators’ use of a
mandatory ‘shall’”); SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348, 1354 (2018). Yet, according to the decision below, that language has nothing to say about whether
the PTO must allow statutorily-authorized appeals to
reach the Board. Pet.App.20.
The fourth relevant feature is that Board review is
the gateway to judicial review of PTO patentability
determinations. Sections 141 and 145 both condition
judicial review on an adverse decision of the Appeal
Board. 35 U.S.C. §§ 141(a), 145. By empowering PTO
to block appeals to the Appeal Board, MPEP
§ 1207.04 also permits it to block judicial review indefinitely. Even if there was some doubt over the
meaning of the Patent Act’s appeal provisions, the
“well-settled presumption favoring interpretations of
statutes that allow judicial review of administrative
action,” McNary v. Haitian Refugee Ctr., Inc., 498 U.S.
479, 496 (1991), would require rejecting PTO’s assertion of authority in MPEP § 1207.04 to block appeals
and judicial review. Turning that presumption on its
head, the Federal Circuit found it sufficient that, in
cases of extreme abuse, an applicant could file an APA
undue delay action, Pet.App.21—which would not, in
any instance, provide review of PTO’s patentability
determinations.
Any of these four features of the statute, standing
alone, would be sufficient to reject the interpretation
adopted by the court below that an applicant has no
16
right to reach the Board following a second rejection.
Taken together, they conclusively preclude the PTO’s
self-serving view that its patentability determinations are subject to Board and judicial review only
when the agency deigns to permit it.
B.
Steinmetz Rejects the PTO’s Claimed
Authority to Block Appeals
The Federal Circuit’s interpretation of the Patent
Act as authorizing the PTO to block appeals would be
indefensible if the court had been writing on a blank
slate, but it was not. This Court confronted and rejected the very same assertion of authority by the
PTO in U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543
(1904). It held that mandamus was the appropriate
remedy when the PTO refused to permit an applicant’s appeal, filed after a second rejection, to proceed
to the board of examiners-in-chief, the predecessor of
today’s Appeal Board. The Court stated: “It was the
duty of the primary examiner…to grant an appeal. It
was the duty of the Commissioner to compel the appeal.” Id. at 565. And because the PTO’s undertaking
of these “ministerial” duties were “rights which the
statutes confer on inventors,” they were enforceable
through mandamus. Id. at 563, 565–66.
Steinmetz should have been controlling here. Although the relevant statutory provisions have been
reenacted, they are unchanged in substance since
Steinmetz’s day. See In re Hengehold, 440 F.2d 1395,
1401 n.9 (C.C.P.A. 1971). Revised Statute 4909, like
Section 134(a) today, provided that “‘[e]very applicant
for a patent, any of the claims of which have been
17
twice rejected…, may appeal from the decision of the
primary examiner…to the board of examiners-inchief.’” Steinmetz, 192 U.S. at 563 (quoting statute).
And Revised Statute 482, like Section 6(b) today, provided that the board of examiners-in-chief’s
“‘duty…shall be, on the written petition of the appellant, to revise and determine upon the validity of the
adverse decisions of examiners upon applications for
patents.’” Id. So there has been no material change in
the law since Steinmetz. And yet the Federal Circuit
declined to address it.
Instead of following the statutory text and
Steinmetz, the Federal Circuit gave the PTO free license to override patent applicants’ statutory appeal
rights, the sole check on the PTO’s examination conduct. That was serious error.
II. The Question Presented Is Exceptionally
Important and Frequently Recurring
Whether an applicant has the right to obtain independent review of the PTO’s patentability decisions is
a fundamental question of patent procedure, one that
directly impacts thousands of applications every single year and, as a practical matter, affects every single application that the PTO examines.
Recognizing that prosecution can be costly, burdensome, and sometimes result in erroneous determinations, Congress carefully balanced the public’s interest in the thoroughness of examination with applicants’ legitimate interests in speed, economy, and definitive adjudication of their substantive entitlement
18
to patents on their inventions. MPEP § 1207.04, and
the decision below upholding it, severely upset that
balance, derogating from the rights Congress afforded
applicants in favor of the PTO’s convenience. That has
serious consequences.
Foremost is the direct injury to thousands of applicants each year when the PTO wields MPEP
§ 1207.04 to block their appeals. To secure patent
rights in their inventions, applicants spend years, and
sometimes millions of dollars apiece, prosecuting
their applications. Each of those applicants, who have
already completed prosecution of their applications, is
forced to shoulder the cost, burden, and delay of fully
briefing an appeal for decision only to be cast back
into prosecution to address new grounds of rejection.
They also suffer the delay or practical denial of judicial review, which can proceed only after the Board
has had its say.
Thousands of inventors are suffering these consequences every year. According to an analysis of 2017
data, the PTO used MPEP § 1207.04 to block 2,200
appeals in which the applicant had filed an appeal
brief, out of 15,800 total, or about 14 percent.4 Thus,
in a single year, applicants completed prosecution of
over 2,000 applications through at least two rounds of
rejections, filed appeals to the Board, prepared and
filed appeal briefs that are little different from court
appeal briefs in length and expense, and then were
forced to start over again when the PTO terminated
4 Gilles, supra.
19
their appeals. The needless cost and waste associated
with these actions is unknown only because the PTO
has made no attempt to tally it—for that matter, it
has not published any statistics concerning its use of
MPEP § 1207.04.
And that is not the worst of it. The PTO has, on
thousands of occasions, blocked multiple appeals in a
single application.5 For example, in Application Ser.
No. 10/135,982, the PTO blocked three consecutive
appeals beginning in 2007 to enter new grounds of rejection before allowing the forth appeal to reach the
Appeal Board. After the Board reversed the examiner,
the PTO reopened prosecution to enter additional rejections on new grounds, necessitating the filing of yet
another appeal, which only recently (a decade after
the initial abortive appeal) resulted in allowance. In
Applications Ser. Nos. 10/142,269 and 11/464,813, the
PTO blocked consecutive appeals in that manner five
and six times, respectively, before the applicants
simply gave up and abandoned their applications.
And in Application Ser. No. 13/617,320, the PTO
blocked three consecutive appeals, leading the applicant to demonstrate in a subsequent petition that the
new grounds of rejection entered by the examiner
were made “without even reading the appeal brief.”6
5 This analysis is based on application data compiled in Lex-
isNexis PatentAdvisor database.
6 Petition, at 4, Ser. No. 13/617,320 (filed Nov. 20, 2017).
20
Then there is the impact on examination quality.
MPEP § 1207.04 permits the PTO to draw out examination indefinitely, subjecting applicants to piecemeal identification of new grounds for additional
rounds of rejections. The Act, by providing for appeal
as of right following a second rejection, strongly incentivizes examiners to identify all relevant grounds of
rejection by the second rejection at the latest, when
an examiner’s work becomes subject to Board review.
The PTO itself has recognized as much. See 37 C.F.R.
§ 1.104(b); MPEP § 2103.I (“[E]xaminers should state
all reasons and bases for rejecting claims in the first
Office action.”). By giving examiners discretion to undertake unlimited additional rounds of rejections
prior to Board review, MPEP § 1207.04 relieves examiners from their duty to complete quality examination
in the first instance and attenuates the accountability
function of Board review. That, in turn, adversely affects examination for all applicants, not only those
who appeal or whose appeals are blocked. In this way,
MPEP § 1207.04’s departure from the Act’s appeal
structure undermines examination quality across the
board.
III. This Case Is an Ideal Vehicle To Assess the
Lawfulness of MPEP § 1207.04
This case presents an ideal and timely vehicle for
the Court to resolve a fundamental question of patent
procedure, patent-applicant rights, and agency
power. Given the Federal Circuit’s exclusive jurisdiction over questions of patent law, 28 U.S.C.
21
§ 1295(a)(1), there will be no further percolation of
this issue through the lower courts.
To begin with, this case properly raises the issue of
the PTO’s claimed authority in MPEP § 1207.04 to
block statutorily-authorized appeals by patent applicants. That issue was raised before the agency in Mr.
Hyatt’s petitions, and the agency addressed it at
length, expressing its views on the proper interpretation of Sections 6 and 134 and the extent of its authority to impose non-statutory “conditions” on appeals
and to reconsider its patentability determinations.
Pet.App.20. After being fully exhausted before the
agency, that issue was then briefed before the district
court and Federal Circuit, which addressed it on the
merits.
Moreover, although the issue presented is an important and recurring one, it is unlikely that another
vehicle will soon arise for the Court to address it.
When the PTO applies MPEP § 1207.04 to block an
appeal, that action…blocks the appeal, preventing judicial review. The fact that an applicant is able to
make it to court means that the PTO has not applied
MPEP § 1207.04, precluding the issue from ever being
raised directly. And no one could have suspected,
when the PTO promulgated MPEP § 1207.04 in 2005,
that it would, years later, come to regard the use of
that extraordinary device as a routine matter.
Accordingly, the only available vehicle to challenge
the PTO’s claim of authority in MPEP § 1207.04 is
through petitioning the PTO for rulemaking to repeal
the rule and then bringing an APA action to challenge
22
the petition denial—a process that takes years and involves substantial expense. The Petitioners have
borne that burden so as to obtain relief from an unlawful PTO policy that would otherwise escape review. Another vehicle raising this important and recurring issue is not likely to come anytime soon.
CONCLUSION
The Court should grant the petition.
Respectfully submitted,
ANDREW M. GROSSMAN
Counsel of Record
MARK W. DELAQUIL
BAKER & HOSTETLER LLP
1050 Connecticut Ave., N.W.
Washington, D.C. 20036
(202) 861-1697
agrossman@bakerlaw.com
APRIL 2019
APPENDIX
App. 1
United States Court of Appeals
for the Federal Circuit
GILBERT P. HYATT, AMERICAN
ASSOCIATION FOR EQUITABLE
TREATMENT, INC.,
Plaintiffs-Appellants
v.
UNITED STATES PATENT AND TRADEMARK
OFFICE, ANDREI IANCU, IN HIS OFFICIAL
CAPACITY AS UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL
PROPERTY AND DIRECTOR OF THE UNITED
STATES PATENT AND TRADEMARK OFFICE,
Defendants-Appellees
Appeal from the United States District Court for
the District of Nevada in No. 2:16-cv-01490-RCJ-PAL,
Judge Robert Clive Jones.
Decided: September 24, 2018
App. 2
ANDREW M. GROSSMAN, Baker & Hostetler LLP,
Washington, DC, argued for plaintiffs-appellants.
Also represented by MARK W. DELAQUIL.
MOLLY R. SILFEN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for defendants-appellees. Also represented by
THOMAS W. KRAUSE, ROBERT J. MCMANUS.
Before REYNA, WALLACH, and HUGHES, Circuit
Judges. HUGHES, Circuit Judge.
Gilbert Hyatt sued the United States Patent and
Trademark Office alleging that the PTO acted unlawfully in denying his petition for rulemaking. Mr. Hyatt now appeals from the district court’s grant of the
PTO’s motion for summary judgment and dismissal of
his claims for lack of subject matter jurisdiction. We
reverse the district court’s dismissal for lack of subject
matter jurisdiction. Because Mr. Hyatt’s claims are
either time-barred or reliant on mistaken statutory
interpretation, however, we affirm on alternate
grounds the district court’s grant of summary judgment.
I
Mr. Hyatt is the named inventor on more than 70
issued patents and approximately 400 pending patent
applications, all of which were filed before June 8,
1995. Due to Mr. Hyatt’s numerous amendments,
App. 3
those pending applications contained approximately
115,000 total claims as of August 2015. Each of these
applications incorporates by reference, and claims
priority from, numerous previously-filed applications
dating back to the early 1970s. In October 2012, the
PTO dedicated twelve fulltime patent examiners to
the sole task of examining Mr. Hyatt’s applications.
By 2015, that number had increased to fourteen.
The PTO’s examination of these patents has
proven slow going. Beginning in the mid-2000s, the
PTO started issuing final rejections for some applications, prompting Mr. Hyatt to appeal the rejections to
the Patent Trial and Appeal Board (PTAB). Upon an
applicant’s filing of an appeal brief before the Board,
the patent examiner may file an examiner’s answer
setting forth the grounds on which the patent was rejected or adding a new ground of rejection. 37 C.F.R.
§ 41.39(a). But there is no statutory or regulatory
deadline for filing an answer. In Mr. Hyatt’s case, the
examiners never filed answers to his briefs, which
prevented the PTAB from acquiring jurisdiction over
his appeals. See 37 C.F.R. § 41.35(a).
In 2013, the PTO issued a series of formal office
actions, called “Requirements,” intended to accelerate
examination of Mr. Hyatt’s claims. These Requirements instructed Mr. Hyatt to limit the number of
claims from each patent family to 600 absent a showing that more claims were necessary, identify the earliest possible priority date and supporting disclosure
for each selected claim, and present a copy of the selected claims to the PTO. Although Mr. Hyatt chal-
App. 4
lenged the PTO’s authority to issue these Requirements, we held that the special circumstances of Mr.
Hyatt’s applications justified the unique disclosure
requirements. Hyatt v. U.S. Patent & Trademark Office, 797 F.3d 1374, 1385 (Fed. Cir. 2015). Following
issuance of the Requirements, the PTO reopened
prosecution of 80 applications that its examiners had
previously rejected.
In February 2014, Mr. Hyatt responded to the reopening of his 80 applications with a suit in the U.S.
District Court for the District of Nevada alleging the
PTO unreasonably delayed examination of his applications by reopening prosecution rather than letting
the PTAB hear his appeals. See Hyatt v. U.S. Patent
& Trademark Office, No. 2:14-CV-00311-LDG, 2014
WL 4829538, at *1 (D. Nev. Sept. 30, 2014). The Nevada district court determined that it lacked jurisdiction over Mr. Hyatt’s claims and transferred his case
to the U.S. District Court for the Eastern District of
Virginia. Id. In November 2015, the Eastern Virginia
district court granted summary judgment for the
PTO. Hyatt v. U.S. Patent & Trademark Office, 146 F.
Supp. 3d 771, 787 (E.D. Va. 2015). Mr. Hyatt did not
appeal the court’s decision.
While his unreasonable delay case was pending
before the Nevada district court, Mr. Hyatt filed a petition for rulemaking with the PTO pursuant to 5
U.S.C. § 553(e). His petition requested that the PTO
either promulgate a rule repealing Manual of Patent
Examining Procedure (MPEP) § 1207.04 or declare
that MPEP provision unenforceable. Section 1207.04
describes an examiner’s ability to, “with approval
App. 5
from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response
to appellant’s brief.” This section provides an alternative to MPEP § 1207.03, which allows examiners to
include new grounds of rejection in their answers to
an applicant’s appeal brief. To avoid abandonment of
an application following a reopening of prosecution,
the applicant must file a reply to the office action reopening prosecution or initiate a new appeal to the
PTAB by filing a new notice of appeal. MPEP
§ 1207.04.
Mr. Hyatt’s petition raised three arguments in
support of repealing MPEP § 1207.04. He argued that
MPEP §1207.04 (1) conflicts with 35 U.S.C. § 6(b)(1)’s
creation of a right for applicants to appeal rejections;
(2) conflicts with 37 C.F.R. § 41.39’s implicit disallowance of prosecution reopening after an applicant’s filing of an appeal brief; and (3) was improperly adopted
without notice-and-comment rulemaking. In September 2014, the PTO denied Mr. Hyatt’s petition. He
subsequently requested reconsideration of that denial, which the PTO denied in December 2015.
In June 2016, Mr. Hyatt filed this suit challenging
the denial of his petition for rulemaking in Nevada
district court under the Administrative Procedure
Act. See 5
U.S.C. §§ 701–706. Mr. Hyatt’s complaint primarily alleges, for the same reasons raised in his petition
for rulemaking, that the PTO’s adoption of MPEP
§ 1207.04 was arbitrary and capricious, in excess of
App. 6
statutory authority, and without observance of procedure required by law. Accordingly, he alleges that the
PTO’s denial of his request to rescind MPEP § 1207.04
was similarly arbitrary and capricious, an abuse of
discretion, or otherwise not in accordance with law.
The district court granted summary judgment to
the PTO and dismissed all of Mr. Hyatt’s claims, determining that it lacked subject matter jurisdiction
over them. In choosing to dismiss the case rather than
transfer it to a court with the requisite jurisdiction,
the district court reasoned that Mr. Hyatt’s challenges to MPEP § 1207.04 were “likely precluded” because he could have raised the same arguments in his
prior unreasonable delay suit. J.A. 4. Mr. Hyatt now
appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
II
We review a district court’s grant of summary
judgment according to the law of the regional circuit.
Teva Pharm. Indus. Ltd. v. AstraZeneca Pharm. LP,
661 F.3d 1378, 1381 (Fed. Cir. 2011) (quoting Lexion
Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352,
1358 (Fed. Cir. 2011)). The Ninth Circuit reviews such
grants de novo. Universal Health Servs., Inc. v.
Thompson, 363 F.3d 1013, 1019 (9th Cir. 2004). Following the Ninth Circuit, “[w]e must determine, viewing the evidence in the light most favorable to the
nonmoving party, whether there are any genuine issues of material fact and whether the district court
correctly applied the relevant substantive law.” Id.
App. 7
(quoting EEOC v. Luce, Forward, Hamilton &
Scripps, 345 F.3d 742, 746 (9th Cir. 2003)).
“The district court’s conclusion that it lacks subject matter jurisdiction is subject to de novo review.”
Ip v. United States, 205 F.3d 1168, 1170 (9th Cir.
2000) (quoting Central Green Co. v. United States, 177
F.3d 834, 835 (9th Cir. 1999)). When an issue of claim
preclusion is “particular to patent law,” we analyze it
under our own law. Acumed LLC v. Stryker Corp., 525
F.3d 1319, 1323 (Fed. Cir. 2008) (quoting Hallco Mfg.
Co. v. Foster, 256 F.3d 1290, 1294 (Fed. Cir. 2001)).
We review de novo whether claim preclusion bars a
plaintiff’s claim. Faust v. United States, 101 F.3d 675,
677 (Fed. Cir. 1996). Whether a claim is barred by a
statute of limitations is also a legal question subject
to de novo review. Newby v. Enron Corp., 542 F.3d
463, 468 (Fed. Cir. 2008). An agency’s denial of a petition for rulemaking is reviewed for whether it is arbitrary and capricious. Preminger v. Sec’y of Veterans
Affairs, 632 F.3d 1345, 1353 (Fed. Cir. 2011).
A
As an initial matter, the district court had subject
matter jurisdiction over Mr. Hyatt’s challenge to the
PTO’s denial of his petition for rulemaking. Under 28
U.S.C. § 1331, district courts have “original jurisdiction of all civil actions arising under the Constitution,
laws, or treaties of the United States.” The APA is a
federal statute that provides a cause of action for persons “suffering legal wrong because of agency action.”
5 U.S.C. § 702. Subject to some exceptions inapplica-
App. 8
ble in this case, APA challenges to federal agency actions usually fall within the district courts’ § 1331 jurisdiction. See Califano v. Sanders, 430 U.S. 99, 105–
07 (1977). In addition, if a plaintiff’s APA challenge
raises a substantial question of patent law, district
courts have jurisdiction under 28 U.S.C. § 1338(a).
Helfgott & Karas, P.C. v. Dickinson, 209 F.3d 1328,
1334 (Fed. Cir. 2000). Here, Mr. Hyatt challenges the
validity of a PTO rule, in part on the basis that it conflicts with statutes and regulations governing the patent application process. We have held that “the question of whether the [PTO] has violated the APA in applying . . . its own regulations . . . raises a substantial
question under the patent laws sufficient to vest jurisdiction with the district court based in part upon
28 U.S.C. § 1338(a).” Id. Thus, the district court had
original jurisdiction over Mr. Hyatt’s case.
Although Congress has granted this court and the
Eastern Virginia district court exclusive jurisdiction
to review final PTAB application decisions, this grant
does not displace the district court’s jurisdiction in
this case. Under 35 U.S.C. § 141(a), if the PTAB affirms an examiner’s final rejection, the applicant may
appeal the PTAB’s final decision to this court. Under
35 U.S.C. § 145, an applicant may alternatively challenge the PTAB’s decision by instituting a civil action
against the PTO Director in the Eastern Virginia district court. But here, Mr. Hyatt’s petition for rulemaking was not an appeal from an examiner’s rejection of
his applications. Relatedly, the PTO Director’s denial
of Mr. Hyatt’s petition is not a PTAB decision. Thus,
Mr. Hyatt’s challenge to the denial of his petition falls
App. 9
outside the exclusive zone of jurisdiction created by
§ 141 and § 145.
The district court reasoned that, even though the
denial of Mr. Hyatt’s petition for rulemaking was not
itself a final PTAB decision within the scope of § 141
and § 145, it lacked jurisdiction because an order invalidating MPEP § 1207.04 would indirectly affect
our jurisdiction over appeals from final PTAB decisions. This reasoning reflected the district court’s interpretation of Telecommunications Research & Action Center v. FCC, 750 F.2d 70 (D.C. Cir. 1984)
(“TRAC”), a case in which the D.C. Circuit noted a
“well settled” rule that “where a statute commits review of agency action to the Court of Appeals, any suit
seeking relief that might affect the Circuit Court’s future jurisdiction is subject to the exclusive review of
the Court of Appeals.” Id. at 76, 78–79.
The district court, however, read the TRAC rule
too broadly. The rule applies to cases concerning interlocutory challenges to agency proceedings that will
culminate in final agency actions exclusively reviewable by certain courts. In those cases, the court with
jurisdiction over the final agency action also has exclusive jurisdiction over the interlocutory challenges
in order to “protect its future jurisdiction.” In re Nat.
Res. Def. Council, 645 F.3d 400, 405 (D.C. Cir. 2011).
For example, in TRAC, public interest groups petitioned the D.C. Circuit for a writ of mandamus to compel the Federal Communications Commission to resolve several matters pending before the agency. 750
F.2d at 72. The court determined that district courts
would lack jurisdiction over this type of unreasonable
App. 10
delay challenge because the final agency action that
the petitioners sought to compel would be exclusively
reviewable in the courts of appeals. Id. at 75, 77. Similarly, in Public Utility Commissioner of Oregon v.
Bonneville Power Administrator, 767 F.2d 622 (9th
Cir. 1985), utility companies sued the Bonneville
Power Administration in district court to challenge
the constitutionality of the agency’s process for adjusting the way in which it calculated certain electricity prices. Id. at 624–25. The court determined that,
because the agency’s final decision on rate calculations would be exclusively reviewable in the court of
appeals, an interlocutory challenge to the process of
making that decision could not be brought in the district courts. Id. at 625–26.
In contrast to the agency actions challenged in
those cases, the PTO’s denial of Mr. Hyatt’s petition
was not an intermediate action taken in the course of
proceedings that would culminate in a final agency
action exclusively reviewable by this court and the
Eastern Virginia district court. The process for petitioning the PTO for rulemaking is completely separate from the patent application examination process
that culminates in final PTAB decisions. Thus, we do
not need to exercise exclusive jurisdiction over denials
of petitions for rulemaking in order to protect our future jurisdiction. If another court granted Mr. Hyatt’s
requested relief and prohibited PTO examiners from
reopening prosecution of applications after an appeal
brief has been filed, the prosecution process would
change, but our ability to review final PTAB decisions
would remain unaffected.
App. 11
Accordingly, the exclusive jurisdiction of this court
and the Eastern Virginia district court to review final
PTAB decisions under § 141 and § 145 does not displace the district court’s jurisdiction over APA challenges to the PTO’s denial of a petition for rulemaking.
B
The PTO argues that the judgment in Mr. Hyatt’s
prior unreasonable delay case bars his present claims
under the doctrine of claim preclusion. In his prior
suit, Mr. Hyatt challenged the PTO’s reopening of
prosecution for 80 of his pending applications. Hyatt,
146 F. Supp. 3d at 773. He alleged that the prosecution re-openings formed part of a pattern of unreasonable delay by the PTO that included issuing repeated
examination suspensions and raising new grounds of
rejection. Id. at 773, 780. He sought a declaration that
the PTO had “unreasonably delayed final agency action on the 80 patent applications in issue” and injunctive relief “barring the PTO from reopening prosecution on the PTO’s own initiative once plaintiff files
… an appeal brief.” Id. at 780. The Eastern Virginia
district court granted summary judgment for the PTO
on the grounds that Mr. Hyatt lacked a remedy because the PTO had recommenced examination of his
applications. Id. at 787. Mr. Hyatt does not dispute
that he could have argued in his prior suit that MPEP
§ 1207.04 is invalid.
For general principles of claim preclusion, we apply the law of the regional circuit. But, for claim preclusion issues “particular to patent law,” as is the case
App. 12
here which requires an analysis of issues related to
the prosecution and examination of patents, we apply
our own law. Acumed LLC, 525 F.3d at 1323. Claim
preclusion applies when “(1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional
facts as the first.” Jet, Inc. v. Sewage Aeration Sys.,
223 F.3d 1360, 1362 (Fed. Cir. 2000). Both parties
agree that the prior unreasonable delay case involved
identical parties and reached a final judgment on the
merits. They only dispute whether the prior case involved the same set of transactional facts.
To determine whether there is an identity of
claims, this court is guided by the Restatement (Second) of Judgments. Foster v. Hallco Mfg. Co., 947 F.2d
469, 478 (Fed. Cir. 1991). Under the Restatement approach, what constitutes the same transaction of facts
is “to be determined pragmatically,” considering
“whether the facts are related in time, space, origin,
or motivation, whether they form a convenient trial
unit, and whether their treatment as a unit conforms
to the parties’ expectations or business understanding
or usage.” Restatement (Second) of Judgments, § 24
(Am. Law Inst. 1982).
Consideration of these factors makes clear that
Mr. Hyatt’s claims in this case do not share an identity with his unreasonable delay claims. First, the two
sets of claims relate to different sets of facts. Mr. Hyatt’s unreasonable delay claims arose from the PTO’s
reopening of prosecution for 80 of his applications in
2013. In contrast, his present claims arose from the
App. 13
PTO’s denial of his petition for rulemaking in December 2015. This petitioning process is completely independent of the PTO’s application examination process. In addition, the two sets of claims could not have
been conveniently tried together. Mr. Hyatt’s petition
for rulemaking was not denied until December 2015,
more than two years after the re-openings of his applications and a month after the final decision in his
unreasonable delay case. Thus, even though Mr. Hyatt could have raised the same arguments concerning
MPEP § 1207.04’s validity in his prior suit, his present claims arise from a different set of facts unrelated in time, origin, or motivation to his prior unreasonable delay claims. Accordingly, claim preclusion
does not bar his present claims.
The PTO’s argument that the two sets of claims
arise from the same set of transactional facts relies on
a misunderstanding of Mr. Hyatt’s claims. The PTO
frames Mr. Hyatt’s suit as a collateral attack on the
agency’s reopening prosecution for the 80 applications
at issue in his unreasonable delay case. But Mr. Hyatt’s present suit does not seek any relief related to
those 80 applications. His claims challenge the PTO’s
denial of his petition for rulemaking and his complaint only seeks forward-looking relief such as “[a]
declaration that MPEP § 1207.04 is unlawful,” “[a]
declaration that the PTO … unlawfully denied the Director Petition,” and “[a]n order enjoining the PTO …
from enforcing MPEP § 1207.04.” J.A. 23–24. The re-
App. 14
quested relief makes clear that Mr. Hyatt is not collaterally attacking the PTO’s prior prosecution reopenings.1
C
The PTO next argues that Mr. Hyatt’s claims are
time-barred. In the absence of a specific statutory limitations period, actions for judicial review against the
United States under the APA are subject to the statute of limitations in 28 U.S.C. § 2401(a). See
Schwalier v. Hagel, 776 F.3d 832, 835 (Fed. Cir.
2015); Preminger v. Sec’y of Veterans Affairs, 517 F.3d
1299, 1307 (Fed. Cir. 2008). Section 2401(a) provides
that “every civil action commenced against the United
States shall be barred unless the complaint is filed
within six years after the right of action first accrues.”
A procedural challenge to an agency rulemaking
under the APA accrues at the time of final agency action. Preminger, 517 F.3d at 1307. The promulgation
of a regulation is a final agency action. Id. Although
the issue has not been directly addressed by this
1 Although claim preclusion does not bar Mr. Hyatt’s chal-
lenge to MPEP § 1207.04 in this challenge to the PTO’s
denial of his petition for rulemaking, he does not have free
reign to raise similar challenges in any future proceeding.
Because Mr. Hyatt undoubtedly could have challenged the
validity of MPEP § 1207.04 in his unreasonable delay suit,
claim preclusion would bar him from doing so in any future
case arising from the PTO’s reopening of prosecution for
the 80 applications at issue in his prior case.
App. 15
court, other circuits apply a separate standard to accrual for substantive challenges to agency rulemaking. See Wind River Min. Corp. v. United States, 946
F.2d 710, 714–15 (9th Cir. 2001); see also Pub. Citizen
v. Nuclear Regulatory Comm’n, 901 F.2d 147, 152
(D.C. Cir. 1990). A substantive challenge alleges that
the agency acted in excess of its constitutional or statutory authority. Wind River Min. Corp., 946 F.2d at
715. For substantive challenges, the right of action accrues either when the agency makes its initial decision or at the time of an adverse application of the decision against the plaintiff, whichever comes later. Id.
An agency’s denial of a plaintiff’s petition for rulemaking qualifies as an adverse application of the existing rule against the plaintiff. Nw. Envtl. Advocates
v. EPA, 537 F.3d 1006, 1019 (9th Cir. 2008). We see
no reason to depart from this precedent regarding the
accrual date for a substantive challenge.
Here, Mr. Hyatt’s challenge to the PTO’s denial of
his petition for rulemaking is based on three challenges to MPEP § 1207.04, two of which are timebarred. First, Mr. Hyatt argues that the PTO promulgated MPEP § 1207.04 without providing public notice and an opportunity to comment. Because this
challenge alleges a procedural irregularity in the
PTO’s adoption of the rule, this right of action accrued
at the time the agency made its initial decision to
adopt MPEP § 1207.04. The PTO added MPEP
§ 1207.04 to the MPEP in 2005. See MPEP § 1207.04
(8th ed. , rev. 3, Aug. 2005). Mr. Hyatt filed his complaint in 2016. Thus, his notice-and-comment claim
App. 16
was filed outside of the six-year statute of limitations
period and is time-barred.
Mr. Hyatt argues that, although the PTO added
MPEP § 1207.04 to the MPEP in 2005, the PTO’s subsequent amendments to MPEP § 1207.04 in 2014 restarted the statute of limitations. This court has not
addressed the impact of rule amendments on the statute of limitations for procedural challenges to a rule.
Mr. Hyatt urges the adoption of the D.C. Circuit’s rule
that treats an amendment that “substantively alter[s]” the rule in a way that “alter[s] the rights and
obligations” of regulated persons as restarting the
statute of limitations. Mendoza v. Perez, 754 F.3d
1002, 1019–20 (D.C. Cir. 2014).
Even under the D.C. Circuit’s rule, however, the
statute of limitations would not be reset by the PTO’s
2014 amendment to § 1207.04 because the amendment did not substantively alter the rule. In Mendoza,
the D.C. Circuit determined that the Department of
Labor substantively altered the foreign worker visa
process by altering substantive rights (e.g., minimum
wage rates for sheep herders) as well as procedural
rules governing the visa application process. Id. at
1019–20. Here, the PTO added language to MPEP
§ 1207.04 providing that a new ground of rejection
raised by the examiner to reopen prosecution could
“include[] both a new ground that would not be proper
in the examiner’s answer as described in MPEP
§ 1207.03, subsection II and a new ground that would
be proper.” Compare MPEP § 1207.04 (8th ed., rev. 9,
Aug. 2012), with MPEP § 1207.04 (9th ed., rev. 1, Mar.
2014). These changes clarified the meaning of a term
App. 17
that already appeared in the original rule. They did
not alter the procedures by which an examiner reopened prosecution or alter the substantive rights of
the applicant. Thus, the PTO’s amendments to MPEP
§ 1207.04 did not restart the statute of limitations for
Mr. Hyatt’s procedural challenges.
Mr. Hyatt also argues that the PTO’s reconsideration of the issue of reopening prosecution in 2011 and
2013 restarted the statute of limitations. When “an
agency’s actions show that it has not merely republished an existing rule … but has reconsidered the
rule and decided to keep it in effect,” the agency’s “renewed adherence” to the rule is “substantively reviewable” even if a challenge to the agency’s original
adoption of the rule would be timebarred. See Pub.
Citizen, 901 F.2d at 150 (quoting Ass’n of Am. R.Rs. v.
ICC, 846 F.2d 1465, 1473 (D.C. Cir. 1988)). Here, the
PTO’s actions do not show any reconsideration of the
practices codified in MPEP § 1207.04. In 2011, the
PTO declined to alter the level of supervisory approval necessary for an examiner to reopen prosecution. Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed.
Reg. 72,287 (Nov. 22, 2011). In 2013, the PTO adjusted its appeal fee structures to limit fees when an
examiner reopens prosecution after an appeal brief
has been filed. Setting and Adjusting Patent Fees, 78
Fed. Reg. 4,230–31 (Jan. 18, 2013). While these issues
tangentially relate to prosecution reopening, the
PTO’s discussion of them does not suggest that it reconsidered whether examiners should be able to reopen prosecution of an application after an applicant
App. 18
files an appeal brief before the PTAB. Accordingly, the
PTO’s 2011 and 2013 discussions of related issues did
not restart the statute of limitations for Mr. Hyatt’s
challenges to MPEP § 1207.04.
Mr. Hyatt’s argument that MPEP § 1207.04 conflicts with 37 C.F.R. § 41.39 is also time-barred. This
challenge is not “substantive” because an agency can
violate its own regulations while remaining within its
statutory and constitutional authority. Nor is the
challenge “procedural” because an argument that two
rules substantively conflict does not challenge how
the agency adopted the rules. Thus, for the purpose of
determining when a right of action accrues under
§ 2401(a), we view a claim that an agency’s action conflicts with a preexisting regulation as a policy-based
challenge. Because the right of action for a policybased challenge to an agency action accrues at the
same time as the right of action for a procedural challenge, see Wind River Min. Corp., 946 F.2d at 715, the
latest that this right of action could have accrued was
also 2005, outside the six-year statute of limitations
period. Thus, Mr. Hyatt’s claim that MPEP § 1207.04
conflicts with 37 C.F.R. § 41.39 is also time-barred.
Mr. Hyatt’s argument that MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1), however, is timely. This
claim concerns the statutory authority of the PTO to
adopt MPEP § 1207.04, which makes it a substantive
challenge. The PTO denied Mr. Hyatt’s petition for
rulemaking in 2015, which qualifies as an adverse application of MPEP § 1207.04 against him. See Nw. Envtl. Advocates, 537 F.3d at 1019. As a result, his right
App. 19
of action accrued in 2015, well within the limitations
period.
D
Because his other claims are time-barred, we only
consider the merits of Mr. Hyatt’s claim that the PTO
unlawfully denied his petition for rulemaking because
MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1). Section
6(b)(1) requires that the PTAB “shall — (1) on written
appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to
section 134(a).” Under 35 U.S.C. § 134(a), “[a]n applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary
examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.” Mr. Hyatt argues that an examiner’s ability to reopen prosecution
after an appeal brief has been filed deprives applicants of their right to maintain an appeal under
§ 6(b)(1). He contends that the statute’s use of the
term “shall” unambiguously requires the Board to
hear an appeal if an applicant files an appeal brief after his claims have been twice rejected. He also contends that the term “appeal” precludes PTO examiners from unilaterally preventing review of their rejections.
“Statutory interpretation begins with the language of the statute.” Norfolk Dredging Co. v. United
States, 375 F.3d 1106, 1110 (Fed. Cir. 2004). “A court
derives the plain meaning of the statute from its text
and structure.” Id. When the language of the statute
App. 20
is clear and unambiguous, the plain meaning of the
statute is conclusive absent special circumstances. Id.
Here, the plain meaning of § 6(b)(1)’s text refutes
Mr. Hyatt’s arguments. Section 6(b) outlines the
PTAB’s duties. The statute’s mandatory language indicates that the PTAB does not have discretion over
whether to review an examiner’s rejection of an application. But the text does not require the PTAB to
reach the merits of every appeal that is filed. Section
134(a) explicitly conditions an applicant’s ability to
appeal on the payment of a fee. Mr. Hyatt does not
question the PTO’s authority to impose procedural
conditions that must be satisfied prior to PTAB review, such as time limits and content restrictions for
the filing of an appeal brief. See 37 C.F.R. § 41.37.
Failure to comply with these procedural requirements
can result in dismissal of an appeal even after the applicant has filed the written notice of appeal contemplated by § 6(b)(1). 37 C.F.R. § 41.37(c). Under current
examination rules, an examiner’s decision not to reopen prosecution is another condition that must be satisfied before an appeal reaches the Board. These conditions on the PTAB reaching the merits of an appeal
do not conflict with § 6(b)(1)’s requirement that the
PTAB review rejections.
The inclusion of the term “appeal” in § 6(b)(1) does
not alter this analysis. Mr. Hyatt asserts that “appeal” is a term of art that connotes an adverse party,
here the PTO examiner, cannot unilaterally prevent
review. He cites Black’s Law Dictionary, which defines “appeal” as “[a] proceeding undertaken to have
a decision reconsidered by a higher authority; esp.,
App. 21
the submission of a lower court’s or agency’s decision
to a higher court for review and possible reversal.”
Black’s Law Dictionary (10th ed. 2014). Even assuming Congress intended to adopt this definition for
§ 6(b)(1), it does not support Mr. Hyatt’s inference.
The PTO’s rules allow applicants to seek review of examiners’ final rejections before a higher authority, the
PTAB. Nothing in this definition of appeal suggests
the PTO cannot impose conditions on the PTAB’s ability to reach the merits of an appeal or delay the appeal. Allowing examiners to reopen prosecution does
not deprive applicants of their right to appeal final examiner rejections because reopening prosecution cannot circumvent PTAB review. Once the examiner
adds a new ground of rejection, the applicant may immediately appeal it along with the old grounds. MPEP
§ 1207.04.
Mr. Hyatt expresses concern that examiners could
use repeated prosecution re openings to prevent the
PTAB from ever reviewing application rejections. But
the prospect that prosecution re openings after the filing of an appeal brief might be used abusively cannot
override the plain meaning of § 6(b)(1). Moreover, as
Mr. Hyatt knows, the APA offers a remedy for such
situations by enabling reviewing courts to compel
agency actions unlawfully withheld or unreasonably
delayed without adequate reason or justification.
5 U.S.C. §§ 702, 706(1). Mr. Hyatt’s prior petition for
a writ of mandamus on the basis of unreasonable delay failed because the PTO had already recommenced
its examination of his applications by the time the district court reached the case’s merits. Hyatt, 146 F.
App. 22
Supp. 3d at 785–86. There is no evidence in the record
that, in the wake of that decision, PTO examiners
have repeatedly reopened prosecution of Mr. Hyatt’s
applications for the purpose of further delaying PTAB
review.
III
Mr. Hyatt’s petition for rulemaking relied on two
time-barred challenges to MPEP § 1207.04 and an erroneous interpretation of § 6(b)(1). The PTO’s denial
of this petition was not arbitrary and capricious.
Therefore, we affirm the district court’s grant of the
PTO’s motion for summary judgment. Because the
district court had jurisdiction over Mr. Hyatt’s claims,
however, we reverse the district court’s dismissal of
Mr. Hyatt’s action for lack of subject matter jurisdiction and remand for the court to enter judgment in
favor of the PTO consistent with this opinion.
AFFIRMED-IN-PART AND REVERSED-INPART
Costs
No costs.
App. 23
UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA
GILBERT P. HYATT et
al.
Plaintiffs,
2:16-cv-01490-RCJ-PAL
vs.
U.S. PATENT &
TRADEMARK OFFICE
et al.,
ORDER
Defendants.
This case arises out of the reopening of prosecution
of certain patent applications before the U.S. Patent
and Trademark Office (“USPTO”). Pending before the
Court are cross motions for summary judgment.
I.
FACTS AND PROCEDURAL HISTORY
Plaintiffs Gilbert Hyatt and the American Association for Equitable Treatment1 have sued the USPTO
and Director Michelle Lee in this Court. The Complaint lists five causes of action arising out of the alleged unlawfulness of section 1207.04 of the Manual
of Patent Examining Procedure (“MPEP”), under
which an examiner may “reopen prosecution to enter
a new ground of rejection in response to [an appeal to
1 Hyatt founded this entity in 2016.
App. 24
the Patent Trial and Appeal Board].” MPEP
§ 1207.04. Plaintiffs allege that § 1207.04 enables the
USPTO to repeatedly reopen prosecution of finally rejected claims upon appeal, thereby frustrating appellate review by the Patent Trial and Appeals Board
(“PTAB”) and ultimately the federal courts. Plaintiffs
claim in five related causes of action that § 1207.04 is
unlawful under the APA and/or the Patent Act or that
at a minimum Defendants’ actions in this case violate
the APA. The parties have filed cross motions for summary judgment.
II.
DISCUSSION
Defendants note that Hyatt currently has approximately 400 patent applications pending, with a total
of over 115,000 claims, all filed in or before 1995, and
that Hyatt has filed so many amendments to his interrelated claims that the USPTO has 14 patent examiners dedicated full time to examining his applications. Defendants argue that the 2013 decision to reopen prosecution of 80 of his approximately 400 applications was made in order to ensure consistent treatment between the many interrelated applications, not
to frustrate appellate review. Defendants ask the
Court to grant summary judgment alternatively
based on: (1) lack of subject matter jurisdiction; (2)
claim preclusion; (3) the statute of limitations; and (4)
the merits.
Hyatt previously sued Defendants in this District
in 2014, complaining of the delay in appellate review
as to the same 80 applications at issue here (“the Previous Action”). (See Compl., ECF No. 1 in Case No.
App. 25
2:14-cv-311). Judge George transferred the Previous
Action to the Eastern District of Virginia, which
shared exclusive jurisdiction with the Court of Appeals. (See Order, ECF No. 29 in Case No. 2:14-cv311). That court granted summary judgment to Defendants on the merits. See Hyatt v. USPTO, 146 F.
Supp. 3d 771, 787 (E.D. Va. 2015). Plaintiff did not
appeal. Although the Complaint in the Previous Action did not specifically refer to the reopening of Hyatt’s applications under MPEP § 1207.04, but only to
the delay in 23 prosecution and appeal generally,
when granting summary judgment against the
claims, the court discussed the reopening of prosecution generally and cited § 1207.04 in particular:
Plaintiff has no right to an examination free
from suspensions, new grounds for rejection, or
reopened prosecution; plaintiff’s right is merely
to an examination of his patent applications.
Simply put, the remedy for unreasonable delay
under § 706(1) is action, not preferential treatment.
Because the statutorily required action—examination of plaintiff’s 80 patent applications
in issue—is already actively underway, there is
nothing for a court to compel. The absence of a
remedy eliminates the need to determine
whether past delays, if any, were unreasonable.
App. 26
Id. at 785–86 & n.33 (citing 37 C.F.R. §§ 1.103(e),
41.39(a)(2); MPEP § 1207.04) (footnote omitted; emphasis added). Accordingly, the present claims are
precluded.
Moreover, as noted by Judge George in the Previous Action, the courts of this District simply have no
subject matter jurisdiction to determine Plaintiffs’
claims. See Pub. Util. Comm’r of Or. v. Bonneville
Power Admin., 767 F.2d 622, 626 (9th Cir. 1985) (Kennedy, J.) (citing Telecomms. Research & Action Ctr. v.
FCC, 750 F.2d 70 (D.C. Cir. 1984)) (“[W]here a statute
commits review of final agency action to the court of
appeals, any suit seeking relief that might affect the
court’s future jurisdiction is subject to its exclusive review.”). Because an order invalidating the reopening
of prosecution under § 1207.04 would affect the jurisdiction of the PTAB to review the applications at issue
and ultimately the jurisdiction of the U.S. District
Court for the Eastern District of Virginia or the U.S.
Court of Appeals for the Federal Circuit to further review the applications, see 35 U.S.C. §§ 144–45, the latter courts have exclusive jurisdiction over the present
claims. The Court must therefore either dismiss the
case for lack of subject matter jurisdiction or transfer
it to one of those courts. The Court will not burden
either of those courts with this likely precluded matter. If Plaintiffs wish to refile in one of those courts,
they may do so on their own initiative.
CONCLUSION
IT IS HEREBY ORDERED that the Motion for
Summary Judgment (ECF No. 22) is GRANTED.
App. 27
IT IS FURTHER ORDERED that the Motion for
Summary Judgment (ECF No. 21) is DENIED.
IT IS FURTHER ORDERED that the Clerk shall
enter judgment dismissing this action for lack of subject matter jurisdiction and close the case.
IT IS SO ORDERED.
DATED: This 17th day of February, 2017.
ROBERT C. JONES
United States District Judge
App. 28
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
GILBERT P. HYATT, AMERICAN
ASSOCIATION FOR EQUITABLE
TREATMENT, INC.,
Plaintiffs-Appellants
v.
UNITED STATES PATENT AND TRADEMARK
OFFICE, ANDREI IANCU, IN HIS OFFICIAL
CAPACITY AS UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL
PROPERTY AND DIRECTOR OF THE UNITED
STATES PATENT AND TRADEMARK OFFICE,
Defendants-Appellees
2017-1722
Appeal from the United States District Court for
the District of Nevada in No. 2:16-cv-01490-RCJ-PAL,
Judge Robert Clive Jones.
ON PETITION FOR PANEL REHEARING
AND REHEARING EN BANC
App. 29
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, and HUGHES,
Circuit Judges*.
PER CURIAM.
ORDER
Appellants American Association For Equitable
Treatment, Inc. and Gilbert P. Hyatt filed a combined
petition for panel rehearing and rehearing en banc. A
response to the petition was invited by the court and
filed by Appellee Andrei Iancu. The petition was referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc was referred
to the circuit judges who are in regular active service.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate of the court will issue on January 17,
2019.
FOR THE COURT
* Circuit Judges Stoll, Taranto, and Chen did not partici-
pate.
App. 30
January 10, 2019
Date
/s/ Peter R.
Marksteiner
Peter R. Marksteiner
Clerk of Court
App. 31
o 5 U.S.C. § 553(E)
§§ 1204 1207
DECISION
United States Patent and Trademark Office
Decision on Petition
I.
Introduction
In July 2014, Gilbert P. Hyatt filed a “Petition
for Rulemaking Pursuant to 5 U.S.C. § 553(e) or for
Other Relief Pursuant to 37 C.F.R. § 1.182 to Repeal Parts of MPEP §§ 1204 and 1207” (“Petition
for Rulemaking”). On September 5, 2014, in a decision (“Decision”) signed by the Chief Administrative Patent Judge of the Patent Trial and Appeal
Board (“Board”), the USPTO denied Mr. Hyatt’s
Petition for Rulemaking. Mr. Hyatt now requests
review of the Decision in a “Petition to the Acting
Director Herself for Review of a Petition Decision
by Chief APJ Smith and for Rulemaking Pursuant
to 5 U.S.C. § 553(e) to Repeal Parts of MPEP §§
1204 and 1207” (“Petition for Review”). Mr. Hyatt
asserts, first, that Chief APJ Smith did not have
authority to decide the Petition for Rulemaking
and, second, that the Decision was incorrect because MPEP § 1207.04 is inconsistent with the
App. 32
USPTO’s statutes and regulations, and invalid for
failure to comply with the APA’s notice-and-comment procedures. With respect to the first issue,
Mr. Hyatt’s Petition for Review is moot in light of
the underlying decision here. With respect to the
second issue, because MPEP § 1207.04 is consistent
with the statutes and regulations (having even
been discussed in the USPTO’s rulemaking process), Mr. Hyatt’s Petition for Review is denied.
II.
Authority to Decide the Initial Petition
for Rulemaking
Mr. Hyatt argues that his Petition for Rulemaking “should not have been decided by the Chief
APJ.” Petition for Review, at 3. MPEP § 1002 does
not specifically delegate decisions on Petitions for
rulemaking like the one filed by Mr. Hyatt to a particular USPTO official. Thus, the fact that MPEP §
1002.02(f)-which lists petitionable matters delegated to the Board for a decision-does not include
petitions under 5 U.S.C. § 553(e) is irrelevant. See
id And even if decisions on petitions under 5 U.S.C.
§ 553(e) had been delegated to a particular USPTO
official in MPEP 1001, that would not have “confer[red] a right to have a matter decided by” that
particular official. MPEP 1001.01 (Mar. 2014).
Equally unavailing is Mr. Hyatt’s contention that
the Chief APJ could not decide his Petition for Rulemaking because the Petition did “not involve[] the
‘functions of the Board; it involve[d] the actions of the
examining operation.” Petition for Review, at 3. Mr.
Hyatt’s Petition for Rulemaking sought either repeal
App. 33
ofMPEP 1207.04, or a declaration from the Director
that MPEP § 1207.04 is “unenforceable.” Petition for
Rulemaking, at 1. MPEP § 1207.04 resides in MPEP
1200 titled “Appeals,” making the Petition for Rulemaking one that the Chief APJ of the Board was qualified to address. Whether or not the Board or the Chief
APJ has “supervisory authority over the actions of the
examining corps” (Petition for Review, at 3) is irrelevant since the relief that Mr. Hyatt sought in his Petition for Rulemaking did not seek to compel or review
a particular action by an Examiner; thus, no “supervision” was sought. While, for reasons discussed
herein, the USPTO agrees with Mr. Hyatt that MPEP
1207.04 involves the actions of the examining corps
before an appeal reaches the jurisdiction of the Board,
that does not mean that an official from within the
examination ranks had to decide his Petition for Rulemaking. In short, it was not improper to have the
Chief Administrative Patent Judge of the USPTO Patent Trial and Appeal Board decide the Petition for
Rulemaking. In any event, Mr. Hyatt’s argument is
moot in view of this decision.
III.
Propriety of MPEP § 1207.04
Mr. Hyatt argues that MPEP § 1207.04-which
provides guidance to examiners regarding reopening prosecution after a Board appeal brief has been
filed-should be declared invalid or unenforceable
because the USPTO lacks such authority. Specifically, first, Mr. Hyatt argues that MPEP § 1207.04
conflicts with 35 U.S.C. § 6(b)(l). Petition for Review, at 4-5. Second, Mr. Hyatt argues that MPEP §
1207.04 conflicts with 37 C.F.R. § 41.39 (“Rule 39”).
App. 34
Id, at 5-6. Third, Mr. Hyatt makes a number of policy-based arguments why MPEP § 1207.04 should
be repealed. Id, at 10-12. Additionally, Mr. Hyatt
argues that even if the USPTO has the authority to
reopen prosecution after the appeal brief, the authority represents a procedural regulation that
must be promulgated through notice-and-comment
(although Mr. Hyatt does not actually request that
the USPTO undertake such a promulgation). Mr.
Hyatt asserts that because MPEP 1207.04 did not
undergo notice-and-comment, it is invalid. Id., at 610. As discussed below, MPEP 1207.04 will neither be repealed nor declared unenforceable.
a.
Background
Current MPEP § 1207.04, titled “Reopening of
Prosecution After Appeal,” explains that the
examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as
used in this subsection includes both a new
ground that would not be proper in an examiner’s answer ... and a new ground that would
be proper (with appropriate supervisory approval).
MPEP § 1207.04 (Mar. 2014). If the examiner elects
not to reopen prosecution after seeing the applicant’s appeal brief, the examiner may file an examiner’s answer in response to the appeal brief. See 37
C.F.R. § 41.39. Rule 39, titled “Examiner’s answer,”
App. 35
provides some information about the content of the
examiner’s answer, including that it may include a
new ground of rejection. Id. at § 41.39(a)(2). It then
provides the procedural choices available to the applicant if the examiner’s answer includes a new
ground, specifically that the applicant can either
(1) request that prosecution be reopened or (2)
maintain the appeal by filing a reply brief responding to the new ground. See id. at § 41.39(b).
Thus, the examiner may choose the route for entering a new ground of rejection after the Board appeal brief is filed if deemed necessary and subject
to approval. MPEP § 1207.04 provides guidance to
the examiner “[i]n deciding whether to reopen prosecution or to add a new ground of rejection to an
examiner’s answer.” MPEP § 1207.04 explains that
there may be circumstances in which reopening
prosecution to enter a new ground of rejection instead of the examiner’s answer is the correct route
to take, whether because the new ground would not
be proper in an examiner’s answer or the new
ground would be proper but there are other reasons
why it would make more sense to reopen prosecution. MPEP § 1207.04 also directs examiners to the
USPTO’s interpretation of what constitutes a “new
ground of rejection” in deciding how to exercise the
examiner’s discretion. See MPEP § 1207.04 (Mar.
2014) (citing MPEP § 1207.03 subsections II and
III).
Critically, while MPEP § 1207.04 and Rule 39
both relate to reopening of prosecution, they do so
for different purposes at different stages. MPEP
App. 36
§ 1207.04 reflects the examiner’s discretion to reopen prosecution after considering the applicant’s
appeal brief but before issuing an examiner’s answer. See MPEP § 1207.04 (reopening is “in response to appellant’s brief’). If the examiner deems
it advisable instead to file an answer, Rule 39 addresses the contents of that answer and defines the
options available to the applicant to respond to any
new ground included therein, including reopening
of prosecution. Rule 39, then, does not discuss the
possible examiner actions that might precede filing
an examiner’s answer.
The MPEP guidance regarding reopening of
prosecution to enter a new ground of rejection predates 37 C.F.R. 41.39. Rule 39 was enacted pursuant to notice-and-comment rulemaking; it was
first proposed on November 26, 2003, and became
final on August 12, 2004. A version of MPEP §
1207.04, which is substantively similar to the current version, was issued soon after that in August
2005. See MPEP § 1207.04 (Aug. 2005). Even before
Rule 39 was proposed and adopted, however,
MPEP § 1208.02 explained that an “examiner may,
with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of
rejection after appellant’s brief or reply brief has
been filed.” See, e.g., MPEP § 1208.02 (Feb. 2003);
MPEP § 1208.02 (Aug. 2001).1 MPEP § 1208.02-
1 The MPEP has contained the same or similar guidance
going back to at least 1953. See MPEP § 1208.01 (Nov.
1953) (“A new ground of rejection (new reference or oth-
App. 37
the predecessor to MPEP § 1207.04-was substantively similar to current MPEP § 1207.04.2
Not surprisingly, then, the notice-and-comment
period leading to the adoption of Rule 39 discussed
the examiner’s ability to reopen prosecution within
the boundaries of that Rule. See Rules of Practice
Before the Board of Patent Appeals and Interferences, 68 Fed. Reg. 66648, 66653 (Nov. 26, 2003)
(Notice of Proposed Rulemaking); Rules of Practice
Before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49960, 49979-80 (Aug. 12, 2004)
(Final Rulemaking). The USPTO explained in the
erwise) may be introduced after appeal either by reopening the prosecution or by including the rejection in
the Examiner’s Answer ....”). Given that the guidance
challenged here by Mr. Hyatt has been publicly available for decades, it seems beyond debate that the issues
raised now could have been raised long ago. Nonetheless, the USPTO will address the merits of the petition.
See 5 U.S.C. §§ 553, 555(e).
2 Mr. Hyatt asserts that MPEP § 1208.02 substantively
changed when it became MPEP § 1207.04. Petition for Review, 9-10. Although, as Mr. Hyatt notes, the MPEP no
longer allowed an applicant to request to reinstate an existing appeal with a required accompanying supplemental
appeal brief, the applicant could effectively do the same
thing by filing a new notice of appeal and appeal brief without paying a new fee. Compare MPEP § 1208.02 (Feb.
2003) with MPEP § 1207.04 (Aug. 2005). In either case, the
applicant would have to address the examiner’s new
ground, in either the supplemental appeal brief or the revised appeal brief.
App. 38
Notice of Proposed Rulemaking that examiners
could include new grounds of rejection in an answer
under then-proposed Rule 39. But, according to the
Notice, “[w]here, for example, a new argument(s) or
new evidence cannot be addressed by the examiner
based on the information then of record, the examiner may need to reopen prosecution rather than
apply a new ground of rejection in an examiner’s
answer to address the new argument(s) or new evidence.” 68 Fed. Reg. at 66653. The USPTO provided examples to illustrate its interpretation of
Rule 39, including one in which the examiner
would be expected to reopen prosecution rather
than issuing a new ground of rejection in an examiner’s answer. See id (Example 2). That example
cited MPEP 1208.02, titled “Reopening of Prosecution After Appeal,” which later became§ 1207.04.
The USPTO then received comments in response to the 2003 Notice of Proposed Rulemaking.3Several of the comments about proposed Rule
39 addressed the issue that the examiner now had
a choice within the boundaries of the proposed Rule
between reopening prosecution, and issuing new
grounds of rejection in an examiner’s answer. For
3 Although Mr. Hyatt had many applications pending dur-
ing the notice-and-comment period, and although he has
been known to comment on proposed rule changes (see
Comments on July 2007 Rules of Practice Before the Board
of Patent Appeals and Interferences in Ex Parte Appeals
available
at
http://www.uspto.gov/ip/rules/comments/bpai1.jsp), Mr. Hyatt did not comment on proposed
Rule 39.
App. 39
example, “[o]ne comment suggest[ed] that allowing
the examiner to institute a new ground of rejection
in the examiner’s answer is unfair to the appellant
and the examiner should be required to reopen
prosecution.” 69 Fed. Reg. at 49979 (Comment 65)
(emphasis added). In response, the USPTO did not
dispute that the examiner could still reopen prosecution, but explained that the applicant also could
request that prosecution be reopened, mooting the
commenter’s criticism. Id. In response to another
comment, the USPTO explained that “in general, if
an appellant has previously submitted an argument during prosecution of the application and the
examiner has ignored that argument, the examiner
will not be permitted to add a new ground of rejection in the examiner’s answer to respond to that argument but would be permitted to reopen prosecution, if appropriate.” Id at 49979-80 (Answer to
Comment 68) (emphasis added).
The USPTO thus issued a Final Rulemaking
demonstrating its interpretation of Rule 39. Specifically, the USPTO indicated its position that while
Rule 39 had been amended to remove the previous
prohibition against including new grounds of rejection
in the answer, the already- existing ability to reopen
prosecution to issue a new ground of rejection remained unchanged.
The USPTO has since repeated its interpretation that Rule 39 did not change the examiner’s
preexisting ability to reopen prosecution after an
appeal brief. Specifically, in July 2007, the USPTO
issued a notice of proposed rulemaking relating to
App. 40
the Board appeal rules that concluded in November
2011 with a final rule. See Rules of Practice Before
the Board of Patent Appeals and Interferences in Ex
Parte Appeals, 72 Fed. Reg. 41472 (July 30, 2007)
(proposed rule); Rules of Practice Before the Board
of Patent Appeals and Interferences in Ex Parte Appeals, 73 Fed. Reg. 32938 (June 10, 2008) (final
rule); Rules of Practice Before the Board of Patent
Appeals and Interferences in Ex Parte Appeals, 73
Fed. Reg. 74972 (Dec. 10, 2008) (delay of final rule
effective date); Rules of Practice Before the Board of
Patent Appeals and Interferences in Ex Parte Appeals, 74 Fed. Reg. 67987 (Dec. 22, 2009) (advance
proposed rule); Rules of Practice Before the Board
of Patent Appeals and Interferences in Ex Parte Appeals, 75 Fed. Reg. 69828 (Nov. 15, 2010) (proposed
rule); Rules of Practice Before the Board of Patent
Appeals and Interferences in Ex Parte Appeals, 76
Fed. Reg. 72270 (Nov. 22, 2011) (final rule).
That rulemaking included proposed changes to
Rule 39. Compare 72 Fed. Reg. at 41487 with 37
C.F.R. § 41.39 (2005) and 37 C.F.R. § 41.39 (2012).
In response to the proposed changes, two comments
discussed the examiner’s option “to reopen prosecution after filing an appeal brief,” suggesting that
Rule 39 should require a Technology Center Director’s approval for the examiner to reopen prosecution at that point. 76 Fed. Reg. at 72287. The
USPTO declined to adopt that suggestion because
it was
outside the scope of the proposed rules. The
proposed rules do not address reopening of
App. 41
prosecution by the examiner after filing an
appeal brief. Rather, subparagraph (a)(2) of
proposed and final Bd.R. 41.39 addresses
only new grounds of rejection raised in an examiner’s answer, and subparagraph (b)(l) of
final Bd.R. 41.39 addresses the appellant’s
right to reopen prosecution in this instance.
MPEP § 1207.04 already requires approval
from the supervisory patent examiner to reopen prosecution after an appellant’s brief or
reply brief has been filed.
76 Fed. Reg. at 72287. The USPTO thus repeated
its interpretation that Rule 39 did not address or
otherwise abridge the examiner’s preexisting authority to reopen prosecution after an appeal brief
discussed in MPEP 1207.04. USPTO rulemaking
on other subjects reflects the same interpretation.
See, e.g., Setting and Adjusting Patent Fees, 78 Fed.
Reg. 4212, 4230-31 (Jan. 18, 2013) (revising ex
parte appeal fee structure to permit applicants to
avoid paying the majority of the fee in situations
where the examiner reopens prosecution, or allows
an application, after an appeal brief is filed).
b.
MPEP § 1207.04 Does Not Conflict With
35 U.S.C. § 6(b)(l)
35 U.S.C. § 6(b)(1) provides that the Board
“shall … on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” Mr. Hyatt asserts
that § 6 “appoint[s] a duty to the Board to decide” an
applicant’s appeal once brought. Petition for Review,
App. 42
at 4. Elsewhere, Mr. Hyatt states that “[b]y conferring
the obligation on the Board to review adverse decisions, the Patent Act forecloses a procedure whereby
an examiner can, after appeal is taken, short-circuit
that review.” Petition for Review, at 5. No conflict exists.
The basis for Mr. Hyatt’s argument that a conflict
exists is unclear. On the one hand, Mr. Hyatt seems
to be arguing that § 6 creates an unavoidable duty on
the part of the Board to “review adverse decisions of
examiners” once an applicant files a notice of appeal;
thus, because the MPEP discusses the ability of the
examiner to reopen prosecution before the case
reaches the Board, MPEP § 1207.04 conflicts with 35
U.S.C. § 6. However, § 6 only “provides in general
terms an organization or vehicle for review of adverse
decisions.” In re Hengehold, 440 F.2d 1395, 1404
(CCPA 1971) (referring to predecessor version 35
U.S.C. § 7). That§ 6 provides only a vehicle for review
of adverse examiner decisions is confirmed by its presence in Chapter 1 of Title 35, providing generally for
USPTO organization and personnel.
Moreover, § 6 does not even provide for an applicant’s right to appeal; 35 U.S.C. § 134(a) provides that right. Hengehold, 440 F.2d at 1404 (explaining that “Section 134 ... is among the sections
establishing the statutory rights an applicant has
during the examination proceeding.”). But even if
Mr. Hyatt had based his argument upon 35 U.S.C.
§ 134(a), it would fail. Section 134(a) simply affords
an applicant the right to file an appeal to the Board;
App. 43
it does not compel any particular result in that appeal, let alone create an unavoidable duty on the
Board to review the rejections that form the basis
for the appeal.
Mr. Hyatt’s interpretation also fails to account
for other portions of the Patent Act and related implementing regulations, which place various requirements on an applicant in order to have an appeal heard by the Board. In particular, § 134(a) requires that the applicant have claims that have
been twice rejected and that the applicant have
“once paid the fee” for an appeal. Indeed, § 134(a)’s
recognition that the applicant need only have “once
paid the fee” for an appeal recognizes that an applicant’s appeal might be reinstated later, after further action by the USPTO, but that the applicant
in that situation need not pay the fee again for that
particular appeal. See, e.g., MPEP § 1207.04; 37
C.F.R. § 41.3 l(c) (“Questions relating to matters
not affecting the merits of the invention may be required to be settled before an appeal can be considered.”); see also 78 Fed. Reg. at 4230-31 (revising ex
parte appeal fee structure to permit applicants to
avoid paying the majority of the appeal fee if the
examiner reopens prosecution after an appeal brief
is filed). Thus, even § 134(a) contemplates that the
Board may not reach the merits of an appeal even
though one has been filed.
Moreover, the Patent Act and USPTO regulations impose time limits, requirements for the contents of an applicant’s brief, and mandatory fees
that must accompany appeals. See, e.g., 35 U.S.C. §
App. 44
133 (mandatory time limit); 35 U.S.C. § 41(a)(6)
(requiring USPTO to charge specific appeal fees);
35 U.S.C. § 2(b)(2)(A) & (B); 37 C.F.R. § 41.4 (indicating that late filings will result in abandonment);
37 C.F.R. § 41.35(b)(5); 37 C.F.R. § 41.37 (setting
out contents for brief and, in subsections (b) and
(d), explaining that appeal will be dismissed if
timely brief is not filed with all of the required content); 37 C.F.R. § 41.45 (fee to be paid following entry of examiner’s answer in order to forward appeal
to Board). An applicant’s failure to comply with
these requirements prevents an applicant from
having an appeal heard by the Board, even if the
applicant has filed a “written appeal” as specified
in 35 U.S.C. § 6(b)(l). Mr. Hyatt does not address
these statutes or regulations, or otherwise challenge the validity of the USPTO regulations.
Consistent with these requirements, Federal
Circuit precedent recognizes that the Board may
adjudicate an appeal without “review[ing] adverse
decisions of examiners.” See, e.g., In re Riggs, 457
F. App’x 923, 925 (Fed. Cir. 2011) (discussing approvingly the rules that require that an appeal be
“properly prepare[d]” before it reaches the Board,
and dismissing appeal for lack of jurisdiction over
Board action relating to procedural rules and compliance); In re James, 432 F.2d 473, 475-76 (CCPA
1970) (observing and holding that the court lacked
jurisdiction to review Board action disposing of appeal on procedural matters); In re Voss, 557 F.2d
812, 816 (CCPA 1977). The CCPA observed in
James that § 6 (then, § 7) only confers authority on
App. 45
the Board to review the merits of “adverse decisions
of examiners,” recognizing that a Board appeal may
be disposed of without conducting such a review.
See James, 432 F.2d at 475-76 (Rich, J., dissenting).
Lastly, Mr. Hyatt’s argument fails to recognize
that the Board does not take jurisdiction over an
appeal until either the applicant files his reply brief
or the time for filing one passes. See 37 C.F.R.
§ 41.35(a). The examiner remains the USPTO individual responsible for considering the merits of the
application when an appeal is filed with the Board.
The examiner’s obligation to consider the patentability of the proposed claims does not terminate because an applicant has filed a Board appeal. See
Butterworth v. Hoe, 112 U.S. 50, 67 (1884) (“That it
was intended that the Commissioner of Patents, in
issuing or withholding patents ... should exercise
quasi-judicial functions, is apparent from the nature of the examinations and decisions he is required to make.”); W Elec. Co. v. Piezo Tech., Inc.,
860 F.2d 428, 431-32 (Fed. Cir. 1988) (“Patent examiners are quasi-judicial officials.”). Examiners
thus possess an inherent ability to revisit their earlier patentability decisions, particularly in light of
the arguments advanced in the appeal brief (which
are often new to the proceedings). See, e.g., Tokyo
Kikai Seisakusho, Ltd. v. United States, 529 F.3d
1352, 1360-61 (Fed. Cir. 2008) (“[T]he courts have
uniformly concluded that administrative agencies
possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of
App. 46
whether they possess explicit statutory authority
to do so.”); Last Best Beef, LLC v. Dudas, 506 F.3d
333, 340-41 (4th Cir. 2007) (as a federal agency,
USPTO possesses “inherent discretion to correct its
own errors and to manage its own docket”); see
Macktal v. Chao, 286 F.3d 822, 825-26 (5th Cir.
2002) (collecting cases). That legal principle has
particularly strong application in the patent examination context, given that the Director “has an obligation to refuse to grant a patent if [s]he believes
that doing so would be contrary to law.” In re
Alappat, 33 F.3d 1526, 1535 (Fed. Cir. 1994); see
BlackLight Power, Inc. v. Rogan, 295 F.3d 1269,
1273-74 (Fed. Cir. 2002) (observing that “the PTO’s
responsibility for issuing sound and reliable patents is critical to the nation” and “[t]he object and
policy of the patent law require issuance of valid
patents”); see also In re Gould, 673 F.2d 1385, 1386
(CCPA 1982) (recognizing that USPTO can reopen
prosecution to enter new grounds of rejection even
after federal judicial review of previous rejections);
In re Fisher, 448 F.2d 1406, 1420 (CCPA 1971) (“After our decision in an ex parte patent case, the Patent Office can always reopen prosecution and cite
new references, in which limited sense our mandates amount to remands.”). Nothing in § 6 precludes the examiner from reopening prosecution
where necessary to exercise the USPTO’s statutory
duty to assess patentability.
Alternatively, Mr. Hyatt appears to be arguing that § 6 commands that the Board take jurisdiction immediately upon the filing of a notice of
App. 47
appeal such that the examiner must first request
remand from the Board in order to reopen prosecution. Petition for Review, at 4. But nothing in
§ 6 requires that the Board immediately take jurisdiction over an appeal once a notice is filed.
And, as just discussed, USPTO regulations make
clear that jurisdiction over the appeal does not
pass to the Board until a reply brief is filed by
the applicant or the time for such filing passes;
until that point, jurisdiction remains with the examiner. See 37 C.F.R. § 41.35(a). Mr. Hyatt does
not acknowledge, let alone challenge, 37 C.F.R.
§ 41.35(a).
c.
MPEP § 1207.04 Does Not Conflict
with 37 C.F.R. § 41.39
Mr. Hyatt asserts that Rule 39 precludes MPEP
§ 1207.04 because Rule 39 defines the only scenario
in which the Examiner can add a new ground of rejection after a Board appeal is filed, and allows the
applicant to reopen prosecution but does not mention the examiner’s ability to reopen prosecution.
But nothing in the plain language of Rule 39 addresses the examiner’s discretionary ability to reopen prosecution after the appeal brief is filed. It has
no need to; as discussed above, Rule 39 addresses
actions that happen during and after the examiner
files an answer, not before filing the answer. See 76
Fed. Reg. at 72287 (issues relating to examiner action before filing answer are outside the scope of
Rule 39).
App. 48
Mr. Hyatt incorrectly assumes that the examiner’s ability to reopen prosecution to enter a new
ground of rejection before filing his answer was
eliminated, sub silentio, when Rule 39 extended his
discretion to enter new grounds to the answer and,
concomitantly, provided applicants with the ability
reopen in response. Nothing in Rule 39 purports to
have eliminated the USPTO’s already-existing
guidance in the MPEP that examiners could reopen
prosecution to enter new grounds of rejection.4Similarly, granting applicants the ability to reopen
prosecution in certain scenarios did not somehow
divest examiners of the same ability.
To the contrary, as the notice-and-comment activity surrounding Rule 39 discussed above makes
clear, the USPTO has consistently explained that
Rule 39 does not prevent the examiner from reopening prosecution after an appeal brief has been
filed under guidance pre-dating Rule 39 and existing today. The USPTO explained that, in practice,
barring examiners from introducing new grounds
of rejection at the appeal stage resulted in instances in which applications proceeded to the
Board with less-than-optimal rejections. See 68
Fed. Reg. at 66653 (explaining that the former ap-
4 Indeed, in light of the law discussed above, examiners
would arguably possess authority to reopen prosecution if
that step was deemed necessary to carry out the USPTO’s
statutory duty to assess patentability and issue rejections
as applicable even without MPEP 1207.04.
App. 49
peal rules resulted in examiners forwarding applications to the Board without addressing the new
arguments by the applicant). This resulted in the
need to reopen prosecution in the event that the
suboptimal rejection was not affirmed, with the
consequence of wasting Board resources and placing ultimately a far greater imposition on applicants than simply reopening prosecution before the
application is sent to the Board. Similarly, in promulgating Rule 39, the USPTO noted that “[m]any
appellants are making new arguments for the first
time in their appeal brief (apparently stimulated
by a former change to the appeal process that inserted the prohibition on new grounds of rejection
in the examiner’s answer).” Id.; see also 69 Fed.
Reg. at 49963. The Notice observed that as a result
of the combination of these factors, “some examiners have allowed cases to go forward to the Board
without addressing the new arguments.” 68 Fed.
Reg. at 66653; see also 69 Fed. Reg. at 49963.
Thus, Rule 39 was proposed and ultimately enacted to “improve the quality of examiner’s answers
and reduce pendency by providing for the inclusion
of the new ground of rejection in an examiner’s answer without having to reopen prosecution.” 68
Fed. Reg. at 66653; see also 69 Fed. Reg. at 49963;
id. at 49979. But the USPTO made clear from the
outset that there would be situations where reopening prosecution was advisable. 68 Fed. Reg. at
66653 (“Where, for example, a new argument(s) or
new evidence cannot be addressed by the examiner
App. 50
based on the information then of record, the examiner may need to reopen prosecution rather than
apply a new ground of rejection in an examiner’s
answer to address the new argument(s) or new evidence.”); see id. (giving examples “when the Office
may or may not consider a factual scenario suitable
for introducing new grounds of rejection in the examiner’s answer”); 69 Fed. Reg. at 49963. Clearly,
then, Rule 39 did not divest the examiner of the
ability to reopen prosecution to address issues
where appropriate. MPEP § 1207.04 reflects that
notice-and-comment discussion, pointing out there
may be scenarios where it is advisable to reopen
prosecution to enter a new ground rather than entering one in the answer.
In short, the particular MPEP provision at issue
here was addressed during notice-and- comment
rulemaking, and the rulemaking was done in view
of that procedural background. The USPTO and
commenters all agreed and assumed that the examiner could reopen prosecution to issue new
grounds of rejection based on the existing MPEP
provisions. The only question was whether Rule 39
should also allow the examiner to issue new
grounds of rejection without reopening prosecution;
the USPTO determined that both should be options, as shown in the promulgated Rule and accompanying discussion, detailed above. Mr. Hyatt
is therefore incorrect that Rule 39 conflicts with
MPEP 1207 .04, and he has not justified eliminating the latter.
App. 51
d.
Mr. Hyatt’s Policy Arguments Have
Largely Been Considered and Rejected in the
Context of Notice-and-Comment Rulemaking
Mr. Hyatt’s assertion that the examiner’s reopening of prosecution is a vehicle for “derail[ing] an
appeal” (Petition for Review, at 2) is simply untrue.
As an initial matter, there are procedural checks
against an examiner simply “derailing” an applicant’s appeal; the supervisor must agree to reopening, and an applicant may petition for further review of such a reopening. And, as discussed extensively above, the USPTO has considered and rejected the same concerns about delay with respect
to Rule 39 and MPEP 1207.04 (and its predecessors) in the context of notice-and-comment rulemaking. As that discussion makes clear, the
USPTO concluded that allowing the examiner to
reopen prosecution after an appeal brief (with approval of a supervisor) promotes the overall efficiency of examination. Board appeals often present
changed circumstances that make reopening prosecution the more efficient course, whether because
the applicant raises new issues in the appeal brief,
or the examiner determines that the existing rejections should be modified or additional rejections
should be made. In those situations, and other situations in which the examiner determines that a
change of circumstances has rendered the existing
rejection(s) not useful, it would not make sense to
require the applicant, the examiner, and the Board
to undergo an entire appeal instead of simply reopening prosecution.
App. 52
Mr. Hyatt’ s own applications are a case in
point. The USPTO has attempted to implement a
consolidated approach to resolving Mr. Hyatt’ s voluminous application and claim filing strategy,
which included reopening prosecution for some applications in which Mr. Hyatt had filed Board appeals in order to enter new grounds of rejection.5 In
other words, the USPTO determined that the current rejections did not completely capture the patentability problems. Under those circumstances, it
would be nonsensically wasteful to nevertheless require the examiner to push forward with an answer, and then force the Board to issue a decision,
when the examiner will eventually have the option
(subject to supervisor approval) of reopening prosecution again to apply the USPTO’s consolidated
approach to addressing the patentability of Mr. Hyatt’s claims in those applications. At a minimum,
such an approach would simply cause additional
unwarranted delay in patent applications in which
final resolution has proven difficult to obtain.
In a footnote, Mr. Hyatt cites a letter that was
filed by the Intellectual Property Section of the
American Bar Association during the course of the
rulemaking that included Rule 39, arguing that
“[c]oncerns over” examiner abuse of the ability to
reopen prosecution led to the letter. Petition for Review, at 11 n.6. But the letter actually expresses
5 Mr. Hyatt does not expressly cite or otherwise challenge
the reopening of prosecution in a particular application in
the underlying petitions here.
App. 53
the opposite concern, namely that the Board misuses its own power over cases within its jurisdiction
to remand to the examiner for additional prosecution. Id.; Petition for Review Ex. 1, at 2. Thus, the
letter proposes rule changes that would curtail the
Board’s ability to remand an appealed application
to the examiner on its own authority. The letter
does not complain about delay by examiners before
the Board has obtained jurisdiction, and it does not
address the “power that examiners have purported
to claim” or the “potential for serious abuse” of that
power as Mr. Hyatt alleges. Petition for Review, at
11. Ironically, accepting Mr. Hyatt’s position that
examiners lack discretion to reopen prosecution after an appeal brief is filed would exacerbate the
problem addressed by the letter; the Board, forced
to adjudicate cases in which the issues are not fully
crystallized, would be forced to remand more appeals to examiners.
Mr. Hyatt also incorrectly asserts that the examiner’s reopening of prosecution somehow differs
from the applicant’s reopening of prosecution in
terms of how much patent-term adjustment is
available to an applicant under 35 U.S.C. § 154.6
Petition for Review, at 11. Section 154 certainly
provides for patent-term adjustment for delays by
the USPTO both before and during appeals. See 35
The USPTO notes that patent-term adjustment is
not relevant to applications filed before June 8, 1995,
which, if granted, would receive a term of seventeen
years from issuance.
6
App. 54
U.S.C. § 154. The Board obtains jurisdiction over
an appeal after a reply brief has been filed or the
time for filing a reply brief has run. 37 C.F.R. §
41.35(a). The patent-term adjustment that applies
before the Board has obtained jurisdiction falls under 35 U.S.C. §§ 154(b)(l)(A) & (B). See 37 C.F.R.
§ l.703(b)(4). The only statute and regulation sections that Mr. Hyatt cites refer to the patent-term
adjustment that applies after the Board has jurisdiction. Mr. Hyatt does not cite any provision regarding the patent-term adjustment that applies
before the Board has jurisdiction, and the USPTO
can think of no scenario in which the patent-term
adjustment would vary depending on whether the
applicant or the examiner has reopened prosecution after an appeal brief was filed.
e.
Notice-and-Comment
Procedures
Are Not Necessary For MPEP 1207.04
Mr. Hyatt argues that MPEP 1207.04 is “invalid because the PTO did not adopt it as a procedural
regulation in accordance with the notice-and-comment rulemaking requirements of the APA, 5
U.S.C. §§ 552 and 553.” Petition for Review, at 6;
see Petition for Review at 1, 6-10. MPEP § 1207.04
was not subject to the notice-and-comment provisions of 5 U.S.C. § 553 because it falls within the
exceptions provided in § 553(b)(A) from its noticeand-comment procedures for “rules of agency organization, procedure, or practice.” Courts recognize that “the ‘critical feature’ of the procedural exception [under§ 553] ‘is that it covers agency ac-
App. 55
tions that do not themselves alter the rights or interests of parties, although it may alter the manner
in which the parties present themselves or their
viewpoints to the agency.” JEM Broad. Co. v. FCC,
22 F.3d 320, 326 (D.C. Cir. 1994) (quoting Batterton
v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980); see
Inova Alexandria Hosp. v. Shala/a, 244 F.3d 342,
349-50 (4th. Cir. 2001) (endorsing and applying
JEM). MPEP § 1207.04 is a rule of procedure that
does not alter the substantive rules for patentability, but recognizes that there may be instances
where having an applicant continue to express his
“viewpoint” to the examiner makes sense for efficiency reasons. See JEM, 22 F.3d at 327 (recognizing that “APA’s procedural exceptions embrace
cases, such as this one, in which the interests ‘promoted by public participation in rulemaking are
outweighed by the countervailing considerations of
effectiveness, efficiency, expedition and reduction
in expense’.”) (quoting Guardian Fed. Savings &
Loan Ass ‘n v. FSLIC, 589 F.2d 658, 662 (D.C. Cir.
1978)).
Mr. Hyatt agrees that MPEP § 1207.04 is a “rule
of agency ... procedure,” but asserts that 35 U.S.C.
§ 2 nonetheless obligates use of notice-and-comment procedures. Petition for Review, at 7-8. Section 2 of the Patent Act authorizes the USPTO to
“establish regulations” that “govern the conduct of
proceedings in the Office.” See 35 U.S.C. § 2(b)(2)
(“The Office– ... (2) may establish regulations, not
inconsistent with law, which-(A) shall govern the
conduct of proceedings in the Office”) (emphasis
App. 56
added). Written permissively, § 2 does not command the Agency to establish all procedure as “regulations.” Furthermore, 35 U.S.C. § 2(b)(2)(B)
states that when the USPTO elects to exercise its
rulemaking authority to “establish regulations ...
[to] govern the conduct of proceedings in the Office,” such regulations “shall be made in accordance
with section 553 of title 5.” The explicit text in 5
U.S.C. § 553 excepts “rules of agency .. procedure”
from notice-and-comment rulemaking. In short, accepting Mr. Hyatt’s statutory reading would impermissibly read out the exceptions in 5 U.S.C. § 553.
See Animal Legal Defense Fundv. Quigg, 932 F.2d
920,931 (Fed. Cir. 1991) (observing that not “every
action taken by an agency pursuant to statutory
authority [is] subject to public notice and comment,” since such a requirement “would vitiate the
statutory exceptions in section 553(b) itself’).
Thus, the exception to notice-and-comment procedures in§ 553 applies with full force to the procedural rule reflected in MPEP § 1207.04. See id. at
930-31; Cooper Techs. v. Dudas, 536 F.3d 1330,
1336-37 (Fed. Cir. 2008) (quoting 5 U.S.C.
553(b)(A) and citing Animal Legal Def Fund);
Actelion Pharm . v. Kappas, 972 F.Supp.2d 51, 58
n.9 (D.D.C. 2013) (explaining that USPTO was not
“required to use notice-and-comment rulemaking”
to issue its procedures relating to patent-term-adjustment calculation because they are “a procedural rule, not a substantive rule”) (citing 5 U.S.C.
§ 553(b)(A)), aff’d, 565 F. Appx. 887 (Fed. Cir.
2014). That the provisions in MPEP § 1207.04 did
App. 57
not need to undergo notice-and-comment is further
strengthened by the fact that the USPTO elected
not to exercise its authority to “establish regulations” under§ 2 for the procedural guidance reflected in MPEP § 1207.04. See MPEP, Forward
(acknowledging that MPEP “does not have the
force of law or the force of the rules in Title 37 of
the Code of Federal Regulations”); Animal Legal
Def Fund, 932 F.2d at 930-31 (§ 553 exceptions to
notice-and-comment procedures applicable where
nothing “suggests” USPTO purported to exercise
rulemaking authority); Petition for Review, at 6
(agreeing that MPEP § 1207.04 is “not a regulation”).
Mr. Hyatt argues that Cooper Technologies does
not support application of§ 553(b)(A)’s exception to
notice-and-comment rulemaking for “rules of
agency organization, procedure, or practice” to
USPTO procedural rules. Petition for Review, at 8.
The Federal Circuit in Cooper Technologies held
that the particular USPTO rule at issue there was
an “exercise of the Patent Office’s authority under
35 U.S.C. § 2” because it “govern[ed] the conduct of
proceedings in the Patent Office.” Cooper Techs.,
536 F.3d at 1336. The court similarly recognized
that exercise of§ 2 authority “is subject to its compliance with 5 U.S.C. § 553,” citing 35 U.S.C. §
2(a)(2)(B). Id. Yet the court held that “[b]y its own
terms, section 553 does not require formal notice of
proposed rulemaking for ‘interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice’.” Id. (quoting 5
App. 58
U.S.C. § 553 (b)(A)) (emphasis added). The court accordingly concluded that the rule at issue “was
therefore not subject to the formal notice-and-comment requirements of section 553.” Id. at 1336-37
(citing Animal Legal Def Fund, 932 F.2d at 931).
While Cooper Technologies applied the “interpretative rules” exception in § 553, the court clearly recognized that the exceptions in 5 U.S.C. § 553 applied to USPTO rules, even in the exercise of 35
U.S.C. § 2. Mr. Hyatt identifies no basis to conclude
that only some of those exceptions would apply,
while others would not. See Pet. for Review, at 8.
Furthermore, the plain language of 35 U.S.C. § 2
and 5 U.S.C. § 553 supports the USPTO’s interpretation, one that the USPTO has previously expressed. See, e.g., Changes to Implement and Examination Guidelines for Implementing the First
Inventor to File Provisions of the Leahy- Smith
America Invents Act, 78 Fed. Reg. 11024, 11047
(Feb. 14, 2013) (interpreting Tafas and Cooper
Techs., and rejecting argument that exception to
notice-and-comment rulemaking for procedural
rules in § 553 does not apply to USPTO); Changes
to Implement Inter Partes Review Proceedings,
Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents, 77
Fed. Reg. 48680, 48710 (Aug. 14, 2012) (§ 553 exceptions apply to USPTO); Changes to Implement
Inter Partes Review Proceedings, 77 Fed. Reg. 7041,
7047 (Feb. 10, 2012) (same).
In a footnote, Mr. Hyatt cites to the district
court decision in Tafas v. Dudas, 541 F. Supp. 2d
App. 59
805, 812 (E.D. Va. 2008), to support his assertion
that all USPTO procedure must be embodied in a
regulation issued using § 553 notice-and-comment
rulemaking. Petition for Review, at 8 n.3. As an initial matter, the trial court did not have any issue
before it regarding whether 2 requires that notice-and-comment procedures must be used for all
procedural rules or guidance; the district court in
Tafas addressed only whether the reference in 35
U.S.C. § 2 to the notice-and-comment provisions of
5 U.S.C. § 553 empowered the USPTO with “substantive” rulemaking authority, since the noticeand-comment requirement ordinarily applies only
to substantive rules. 541 F. Supp. 2d at 812. Further, the district court in Tafas did not hold that all
rules relating to procedure must be promulgated
through notice-and-comment rulemaking. The trial
court observed only that notice-and-comment provisions apply to the USPTO “when promulgating
rules it is otherwise empowered to make.” Id. (emphasis added).7
Indeed, there would be little purpose for the
USPTO to employ notice-and-comment procedures to
7 To the extent the district court decision in Tafas v. Dudas
can be read as expansively as Mr. Hyatt suggests, the Federal Circuit observed on appeal that Cooper Techs., 536
F.3d at 1336-37, “casts doubt” on such a view. Tafas v. Doll,
559 F.3d 1345, 1352 n.3 (Fed. Cir. 2009), rehearing en bane
granted and decision vacated, 328 F. Appx. 658 (Fed. Cir.
2009), appeal dismissed, Tafas v. Kappas, 586 F.3d 1369
(Fed. Cir. 2009); see also Tafas v. Doll, 559 F.3d at 1369
(Radar, C.J., concurring-in-part and dissenting-in-part).
App. 60
establish MPEP § 1207.04 as a “regulation” in 37
C.F.R. et seq. While not required, notice-and-comment
procedures can be useful for procedural rules by eliciting feedback from agency stakeholders that is taken
into account in promulgating final rules, particularly
rules governing applicant conduct. Thus, sometimes
the USPTO elects to establish procedural rules using
the APA’s notice-and-comment rulemaking procedures. But that cannot possibly bind the USPTO to
promulgate all of its procedural rules, currently reflected in the more-than-2600-page (excluding appendices) MPEP, through notice-and-comment rulemaking as a “regulation.” See Batterton, 648 F.2d at 707
(exception for procedural rules ensures “that agencies
retain latitude in organizing their internal operations”). And the considerations perhaps justifying the
expense and effort of employing notice-and-comment
procedures for procedural rules do not apply to MPEP
§ 1207.04, which does not regulate applicant conduct
before the USPTO, but instead provides notice regarding possible discretionary procedural action by
the USPTO. See Refac Int’l, Inc. v. Lotus Dev. Corp.,
81 F.3d 1576, 1584 n.2 (Fed. Cir. 1996) (“The MPEP
does not have force and effect of law; however it is entitled to judicial notice as the agency’s official interpretation of statutes and regulations, provided that it
is not in conflict with the statutes or regulations.”);
Petition for Review, at 6 (Mr. Hyatt recognizing that
the MPEP provides “‘instructions to examiners’ and
thus guidance to the public as to procedures that examiners will follow”). MPEP § 1207.04 does not, as
Mr. Hyatt asserts, “impose obligations on the public.”
Petition for Review, at 6. At most, it “impos[es] on
App. 61
them the incidental inconveniences of complying with
an enforcement scheme,” but “such derivative burdens hardly dictate notice and comment review.” Am.
Hosp. Assn. v. Bowen, 834 F.2d 1037, 1051 (D.C. Cir.
1987) (applying§ 553 exception for procedural rules).
Alternatively, MPEP § 1207.04 reflects a “general statement of policy” exempted from noticeand-comment rulemaking by§ 553(b)(A). A rule
constitutes a “policy statement” when it (1) has
only prospective effect, and (2) leaves the agency
decision-makers free to exercise their discretion.
See Chrysler Corp. v. Brown, 441 U.S. 281,302 n.31
(1979) (policy statements under§ 553 are “statements issued by an agency to ‘advise the public prospectively of the manner in which the agency proposes to exercise a discretionary power’”) (quoting
ATTORNEY GENERAL’S MANUAL ON THE ADMINISTRATIVE
PROCEDURES ACT 30 n.3 (1947)); Chen Zhou Chai v. Carroll, 48 F.3d 1331, 1341 (4th Cir. 1995); Catawba
County, v. EPA, 571 F.3d 20, 33-35 (D.C. Cir.
2009); Am. Bus Assoc. v. United States, 627 F.2d
525,529 (D.C. Cir. 1980).
MPEP § 1207.04 does not impose any “obligations or prohibitions on regulated entities.” Nat’l
Mining Assoc., v. McCarthy, 758 F.3d 243,252 (D.C.
Cir. 2014) (finding EPA guidance document relating to issuance of Clean Water Act permits to be a
“general statement of policy” under the APA for
purposes of pre-enforcement review); Am. Bus, 627
F.2d at 529; Pac. Gas & Elec. Co. v. Fed. Power
Comm’n, 506 F.2d 33, 38 (D.C. Cir. 1974) (“A general statement of policy, on the other hand, does not
App. 62
establish a ‘binding norm’” but instead provides
“public dissemination of the agency’s policies prior
to their actual application in particular situations”)
(citation omitted). Indeed, MPEP § 1207.04 does
not expressly “require anyone to do anything or []
prohibit anyone from doing anything,” even examiners. Nat’l Mining Assoc., 758 F.3d at 252; see Catawba County, 571 F.3d at 34-35.
MPEP § 1207.04 also leaves discretion open to
examiners and their supervisors to reopen prosecution on a case-by-case basis. See Chen Zhou
Chai, 48 F.3d at 1341 (concluding that interim
rule was general statement of policy because it
“merely provided that the Attorney General may
grant asylum to aliens” for particular reasons);
Am. Mining Cong. v. Mine Safety & Health Admin., 995 F.2d 1106, 1111 (D.C. Cir. 19930) (“[A]
good rule of thumb is that a norm is less likely to
be a general policy statement when it purports
(or, even better, has proven) to restrict agency
discretion ....”). MPEP § 1207.04 provides guidance to examiners and their supervisors “[i]n deciding whether to reopen prosecution or to add a
new ground of rejection to an examiner’s answer
where proper under MPEP § 1207.03 et seq.” See
MPEP § 1207.04 (discussing various factors to
consider in deciding how to proceed) (emphasis
added).
Yet still, MPEP § 1207.04 fits comfortably
within the exception for notice-and-comment procedures in § 553 for “interpretative rules.” “Interpre-
App. 63
tative rules ... clarify or explain existing law or regulation and are exempt from notice and comment
under section 553(b)(A)” Nat’l Org. of Veterans’ Advocates, Inc. v. Secy of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (citation omitted).
Thus, the USPTO can adopt interpretive guidance,
consistent with its statutes and regulations, to provide for Agency procedure. And that is what the
USPTO has done in issuing the MPEP. See Refac
Int’l, 81 F.3d at 1584 n.2. MPEP § 1207.04 embodies an “interpretative rule” because it clarifies the
USPTO’s authority in the context of Board appeals
under 35 U.S.C. § 134 and related USPTO regulations (as reflected, for example, in the notice-andcomment discussions relating to Rule 39 discussed
above). Indeed, MPEP § 1207.04 provides the
USPTO’s interpretation as to what constitutes a
“new ground of rejection” under Rule 39 (with reference to other MPEP sections), as well as clarifies
when a new ground should be included in the answer under Rule 39 or entered after reopening
prosecution. More broadly, MPEP § 1207.04 also
expresses the USPTO’s interpretation of the general legal doctrine recognizing that an agency official can revisit prior decisions and take further action, as warranted, applied to the particular context of Board appeals. See, e.g., Tokyo Kikai, 529
F.3d at 1360-61; Last Best Beef, 506 F.3d at 340-41;
Macktal, 286 F.3d at 825-26. As such, MPEP §
1207.04 reflects the exceptions in§ 553(b) to noticeand-comment procedures for “interpretative rules.”
See, e.g., Nat’l Org. of Veterans’ Advocates, 260 F.3d
at 1375-76; Animal Legal Def Fund, 932 F.2d at
App. 64
927 (“[A] rule which merely clarifies or explains existing law or regulations is ‘interpretative’” and exempt from 5 U.S.C. § 553 rulemaking requirements).
Lastly, Mr. Hyatt asserts that the USPTO “has
not complied with the requirements of § 552 of the
APA, which requires publication of rules of procedure in the Federal Register.” Petition for Review,
at 8. “An agency pronouncement must be published
if it is of such a nature that knowledge of it is
needed to keep parties informed of the agency’s requirements as a guide for their conduct.” D&W
Food Centers, Inc. v. Block 786 F.2d 751, 757 (6th
Cir. 1986); see United States v. Hayes, 325 F.2d 307,
309 (4th Cir. 1963) (per curiam) (referencing early
version of statute; publication not required if material does not “instruct [public] in regard to the
presentation to the agency of any such subject to
impartial consideration or action thereon”); Hogg v.
United States, 428 F.2d 274,280 (6th Cir. 1970)
(holding that internal delegation of authority need
not be published under § 552). MPEP § 1207.04
cannot be said to guide applicant conduct before the
USPTO since it addresses possible examiner action
in response to applicant conduct.
Even if § 552 requires that MPEP § 1207.04 be
published in the Federal Register, Mr. Hyatt does
not actually allege that any such failure supports
invalidating MPEP § 1207.04. With good reason;
courts recognize that the “purpose of publication in
the Federal Register is public guidance.” Pitts v.
United States, 599 F.2d 1103, 1107-08 (1st Cir.
App. 65
1979) (rejecting argument that failure to publish
“Civilian Marine Personnel Instructions” in Federal Register invalidated particular provision under 5 U.S.C. § 552, characterizing it “is grasping at
a straw”). Section 552 reflects that purpose by making clear that “actual and timely notice of the
terms” of any unpublished guidance moots any concerns over non-publication when such guidance is
applied against an individual. The MPEP has always been a publicly-accessible manual that applicants and practitioners—including Mr. Hyatt—
have long been aware communicates “guidance to
the public as to the procedures that examiners will
follow.” Petition for Review, at 6; see Title Page,
MPEP (discussing various ways in which MPEP
can be accessed). Indeed, the above discussion of
MPEP § 1207.04 in the Federal Register in the context of other rulemakings makes clear that the public has had widespread and continuous notice of its
provisions.
IV.
Conclusion
In view of the foregoing, the USPTO has determined that Mr. Hyatt’s Petition for Rulemaking
under 5 U.S.C. § 553(e), seeking either repeal of
MPEP § 1207.04 or declaration that the provision
is unenforceable, is denied. MPEP § 1207.04 will
not be repealed or declared unenforceable. No additional filings from Mr. Hyatt on this matter will
be entertained.
App. 66
Russel Slifer
Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United
States Patent and Trademark Office
DATED:
cc: Aaron M. Panner
Kellogg, Huber, Hansen, Todd, Evans & Figel,
P.L.L.C.
1615 M. Street NW, Suite 400
Washington, DC 20036
Attorney for Gilbert P. Hyatt
App. 67
UNITED STATES PATENT AND TRADEMARK
OFFICE
BEFORE THE
PATENT TRIAL AND APPEAL BOARD
DECISION ON PETITION
The United States Patent and Trademark Office
(USPTO) acknowledges receipt of a petition, dated
July 16, 2014, filed on behalf of Gilbert P. Hyatt and
requesting that the provisions in section 1207.04 of
the Manual of Patent Examining Procedure (MPEP)
for reopening prosecution in an application on appeal
be removed.1 The petition alleges specifically that the
provisions in MPEP § 1207.04: (1) are inconsistent
with 35 U.S.C. § 6 and 37 C.F.R. § 41.39, and (2) were
not promulgated under notice-and- comment rulemaking procedures, citing Tafas v. Dudas, 541 F.
Supp. 2d 805 (E.D. Va. 2008) for the proposition that
all USPTO rulemaking is subject to the notice-andcomment requirement of 5 U.S.C. § 553. The petition
is being treated as a petition for rulemaking under 5
U.S.C. § 553(e)2 and is before the Chief Administrative Patent Judge of the Patent Trial and Appeal
Board (“the Board”) for a decision.
1 The petition also requests conforming changes to MPEP
§§ 1204, 1207, and 1211.
2 The petition is styled as a petition for rulemaking pursu-
ant to 5 U.S.C. § 553(e) or for other relief pursuant to 37
C.F.R. § 1.182 to repeal parts of MPEP §§ 1204 and 1207.
App. 68
This is a decision denying the petition.
ANALYSIS
Initially, it is noted that the petition requests
“expedited treatment” because of the possible impact of a change to MPEP § 1207.04 in a pending
litigation. The USPTO’s handling of a petition for
rulemaking under 5 U.S.C. § 553(e), however, is unlikely to have an impact on currently pending litigation as: (1) the rulemaking process can be a timeconsuming process3 that does not have a predetermined outcome, and (2) changes made through
Any general complaint that a provision of the MPEP is inconsistent with law or otherwise inaccurate may be addressed to the MPEP staff at Mail Stop MPEP, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia
22313-1450.
3 For example, recent revisions of the rules pertaining to
ex parte appeals began with a notice of proposed rulemaking published in 2007 and concluded with a final rule published in November of 2011. See Rules of Practice Before
the Board of Patent Appeals and Interferences in Ex Parte
Appeals, 72 Fed. Reg. 41472 (July 30, 2007) (proposed
rule), Rules of Practice Before the Board of Patent Appeals
and Interferences in Ex Parte Appeals, 73 Fed. Reg. 32938
(June 10, 2008) (final rule), Rules of Practice Before the
Board of Patent Appeals and Interferences in Ex Parte Appeals, 73 Fed. Reg. 74972 (Dec. 10, 2008) (delay of final
rule), Rules of Practice Before the Board of Patent Appeals
and Interferences in Ex Parte Appeals, 74 Fed. Reg. 67987
(Dec. 22, 2009) (advance proposed rule), Rules of Practice
Before the Board of Patent Appeals and Interferences in
App. 69
rulemaking are generally prospective only. See 5
U.S.C. § 551(4). Moreover, a petition challenging
the application of a provision of the MPEP in a particular application or patent should be filed as a petition in that application or patent.
The provisions of MPEP § 1207.04 are not inconsistent with 35 U.S.C. § 6 or any other law. The
U.S. Court of Customs and Patent Appeals, the predecessor of the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), has indicated that
35 U.S.C. § 7 (now 35 U.S.C. § 6) provides in general terms a vehicle for review of adverse decisions.
This provision appears in Chapter 1 of Title 35,
which relates to the establishment of the USPTO.
On the other hand, 35 U.S.C. § 134 appears in
Chapter 12 of Title 35, which relates to examination of applications, and provides for the statutory
right of an applicant to appeal an examiner’s decision during the patent examination process. See In
re Volk, 634 F.2d 607,609 (CCPA 1980) (citing In re
Hengehold, 440 F.2d 1395, 1404 (CCPA 1971)).
Therefore, 35 U.S.C. § 6(b) is viewed more appropriately as a provision that describes the functions
of the Board, which is the organization within the
USPTO that is responsible for reviewing adverse
decisions of examiners, rather than a provision
which entitles any applicant to have review of any
Ex Parte Appeals, 75 Fed. Reg. 69828 (Nov. 15, 2010) (proposed rule), and Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76
Fed. Reg. 72270 (Nov. 22, 2011) (final rule).
App. 70
adverse decision of an examiner by the Board by
filing a written appeal.
Additionally, the provisions of MPEP § 1207.04
have been promulgated consistent with the requirements of 5 U.S.C. § 553. Notably, the statement by the district court in Tafas that the USPTO
must engage in notice-and-comment rulemaking
for any rule change was rejected by the Federal Circuit shortly after the district court decision in Tafas. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330,
1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. §
553, and thus 35 U.S.C. § 2(b)(2)(B), does not require notice and comment rulemaking for “interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice”) (quoting 5 U.S.C. § 553(b)(3)(A)).4 In any
event, the current procedures for adding a new
ground of rejection by reopening prosecution or by
including the new ground of rejection in the examiner’s answer were adopted in a notice-and- comment rulemaking. See Rules of Practice Before the
Board of Patent Appeals and Interferences, 68 Fed.
Reg. 66648, 66653 (Nov. 26, 2003) (proposing to
permit examiners to enter a new ground of rejection either in an examiner’s answer or by reopening
prosecution) and Rules of Practice Before the Board
See also Mikkilineni v. Stoll, 410 Fed. App’x 311, 313
(Fed. Cir. 2010) (finding USPTO’s 2009 guidelines concerning 35 U.S.C. § 101 are interpretive, rather than substantive, and are thus exempt from the notice and comment
requirements of 5 U.S.C. § 553).
4
App. 71
of Patent Appeals and Interferences, 69 Fed. Reg.
49960, 49980 (Aug. 12, 2004) (permitting examiners to enter a new ground of rejection either in an
examiner’s answer or by reopening prosecution).
The provisions of MPEP § 1207.04 in question
simply memorialize the practice adopted in the
2003-04 notice-and-comment rulemaking.
The USPTO appreciates that reopening prosecution of an application after the filing of an appeal brief
may place an imposition on the applicant. Ideally, the
issues are crystalized before there is a final rejection
and before an appeal brief is filed. There are situations, however, in which the issues are not fully
formed before an appeal brief is filed, either because
an applicant raises new issues in the appeal brief or
because the examiner uncovers a better ground of rejection after the appeal brief is filed. In these situations, simply requiring that an application be forwarded to the Board for decision once an appeal brief
is filed has adverse consequences for the patent system and places ultimately a greater imposition on the
applicant.
Specifically, barring examiners from introducing
any new ground of rejection at the appeal stage has
resulted in instances in which applications proceed to
the Board with second-best rejections. See Rules of
Practice Before the Board of Patent Appeals and Interferences, 68 Fed. Reg. at 66653 (explaining that
the former appeal rules resulted in examiners forwarding applications to the Board without addressing
the new arguments by the applicant). This may result
in the need to reopen prosecution in the event that
App. 72
the suboptimal rejection is not affirmed, and may
have the consequence of wasting Board resources
by placing ultimately a far greater imposition on
applicants than simply reopening prosecution before the application is sent to the Board. Thus, the
USPTO has adopted procedures under which an examiner, with supervisory approval, may add a new
ground of rejection by reopening or including the
new ground of rejection in the examiner’s answer.
Recently, the USPTO revised the ex parte appeal rules and considered reopening patent prosecution once again during rulemaking. See Rules of
Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals, 76 Fed. Reg. at
72287 (discussing the level of supervisory approval
necessary to reopen prosecution). The USPTO also
considered this issue in 2012-13 when revising patent fees, and revised the ex parte appeal fee structure to permit applicants to avoid paying the majority of the appeal fee in situations in which the
examiner reopens prosecution or allows an application after an appeal brief is filed. See Setting and
Adjusting Patent Fees, 78 Fed. Reg. 4212, 4230-31
(Jan. 18, 2013). Thus, the issue of reopening prosecution in an application on appeal has been considered in three, separate rulemakings within the last
fifteen years.
Accordingly, the provisions in MPEP § 1207.04:
(1) are not inconsistent with 35 U.S.C. § 6 or any
other law or regulation, and (2) have been promulgated consistent with the requirements of 5 U.S.C.
App. 73
§ 553. In addition, a rulemaking to propose removing or revising the provisions in MPEP § 1207.04
for reopening prosecution in an application on appeal would reconsider an issue that has been considered in three rulemakings within the last fifteen
years. Accordingly, the USPTO has determined
that a rulemaking to remove the provisions in
MPEP § 1207.04 for reopening prosecution in an
application on appeal is not warranted.
DECISION
In view of the foregoing, the present petition is
DENIED.
James Donald Smith
Chief Administrative Patent Judge
AARON M. PANNER
KELLOGG, HUBER, HANSEN, TODD, EVANS
& FIGEL,
P.L.L.C. 1615 M STREET NW, SUITE 400
WASHINGTON, D.C. 20036
Attorney for Gilbert P. Hyatt
App. 74
UNITED STATES CODE
35 U.S.C. § 6. Patent Trial and Appeal Board
(a) In General.—
There shall be in the Office a Patent Trial and Appeal
Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall
constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive
order, rule, regulation, or delegation of authority, or
any document of or pertaining to the Board of Patent
Appeals and Interferences is deemed to refer to the
Patent Trial and Appeal Board.
(b) Duties.—The Patent Trial and Appeal Board
shall—
(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for
patents pursuant to section 134(a);
(2) review appeals of reexaminations pursuant to
section 134(b);
(3) conduct derivation proceedings pursuant to
section 135; and
(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.
App. 75
(c) 3-Member Panels.—
Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at
least 3 members of the Patent Trial and Appeal
Board, who shall be designated by the Director. Only
the Patent Trial and Appeal Board may grant rehearings.
(d) Treatment of Prior Appointments.—The Secretary of Commerce may, in the Secretary’s discretion,
deem the appointment of an administrative patent
judge who, before the date of the enactment of this
subsection, held office pursuant to an appointment by
the Director to take effect on the date on which the
Director initially appointed the administrative patent
judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the
basis of the judge’s having been originally appointed
by the Director that the administrative patent judge
so appointed was acting as a de facto officer.
App. 76
35 U.S.C. § 134. Appeal to the Patent Trial and
Appeal Board
(a) Patent Applicant.—
An applicant for a patent, any of whose claims has
been twice rejected, may appeal from the decision of
the primary examiner to the Patent Trial and Appeal
Board, having once paid the fee for such appeal.
(b) Patent Owner.—
A patent owner in a reexamination may appeal from
the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having
once paid the fee for such appeal.
App. 77
35 U.S.C. § 141. Appeal to Court of Appeals for
the Federal Circuit
(a) Examinations.—
An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal
Board under section 134(a) may appeal the Board’s
decision to the United States Court of Appeals for the
Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section
145.
(b) Reexaminations.—
A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent
Trial and Appeal Board under section 134(b) may appeal the Board’s decision only to the United States
Court of Appeals for the Federal Circuit.
(c) Post-Grant and Inter Partes Reviews.—
A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision
of the Patent Trial and Appeal Board under section
318(a) or 328(a) (as the case may be) may appeal the
Board’s decision only to the United States Court of
Appeals for the Federal Circuit.
(d) Derivation Proceedings.—
A party to a derivation proceeding who is dissatisfied
with the final decision of the Patent Trial and Appeal
Board in the proceeding may appeal the decision to
App. 78
the United States Court of Appeals for the Federal
Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20
days after the appellant has filed notice of appeal in
accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the
appellant does not, within 30 days after the filing of
such notice by the adverse party, file a civil action under section 146, the Board’s decision shall govern the
further proceedings in the case.
App. 79
35 U.S.C. § 145. Civil action to obtain patent
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the
United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director
in the United States District Court for the Eastern
District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention,
as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts
in the case may appear and such adjudication shall
authorize the Director to issue such patent on compliance with the requirements of law. All the expenses
of the proceedings shall be paid by the applicant.
App. 80
CODE OF FEDERAL REGULATIONS
37 CFR § 41.31. Appeal to Board
(a) Who may appeal and how to file an appeal.
An appeal is taken to the Board by filing a notice of
appeal.
(1) Every applicant, any of whose claims has been
twice rejected, may appeal from the decision of the
examiner to the Board by filing a notice of appeal
accompanied by the fee set forth in § 41.20(b)(1)
within the time period provided under § 1.134 of
this title for reply.
(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before
November 29, 1999, any of whose claims has been
twice rejected, may appeal from the decision of the
examiner to the Board by filing a notice of appeal
accompanied by the fee set forth in § 41.20(b)(1)
within the time period provided under § 1.134 of
this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has
been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board
by filing a notice of appeal accompanied by the fee
set forth in § 41.20(b)(1) within the time period
provided under § 1.134 of this title for reply.
App. 81
(b) The signature requirements of §§ 1.33 and
11.18(a) of this title do not apply to a notice of appeal
filed under this section.
(c) An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and
entered by the Office. Questions relating to matters
not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1)
through (a)(3) of this section are extendable under the
provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
App. 82
37 CFR § 41.35. Jurisdiction over appeal
(a) Beginning of jurisdiction. Jurisdiction over the
proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in
which to file such a reply brief, whichever is earlier.
(b) End of jurisdiction. The jurisdiction of the
Board ends when:
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2)
and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with
§ 1.138 of this title is recognized,
(4) A request for continued examination is filed
which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d),
and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to
§ 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see
§ 41.50(b)(1)).
(c) Remand ordered by the Director. Prior to the
entry of a decision on the appeal by the Board (see
App. 83
§ 41.50), the Director may sua sponte order the proceeding remanded to the examiner.
(d) Documents filed during Board’s jurisdiction.
Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over
the proceeding will be held in abeyance until the
Board’s jurisdiction ends.
(e) Administrative remands ordered by the
Board. If, after receipt and review of the proceeding,
the Board determines that the file is not complete or
is not in compliance with the requirements of this
subpart, the Board may relinquish jurisdiction to the
examiner or take other appropriate action to permit
completion of the file.
App. 84
37 CFR § 41.39. Examiner’s answer
(a) Content of examiner’s answer. The primary
examiner may, within such time as may be directed
by the Director, furnish a written answer to the appeal brief.
(1) An examiner’s answer is deemed to incorporate
all of the grounds of rejection set forth in the Office
action from which the appeal is taken (as modified
by any advisory action and pre-appeal brief conference decision), unless the examiner’s answer expressly indicates that a ground of rejection has
been withdrawn.
(2) An examiner’s answer may include a new
ground of rejection. For purposes of the examiner’s
answer, any rejection that relies upon any Evidence not relied upon in the Office action from
which the appeal is taken (as modified by any advisory action) shall be designated by the primary
examiner as a new ground of rejection. The examiner must obtain the approval of the Director to
furnish an answer that includes a new ground of
rejection.
(b) Appellant’s response to new ground of rejection. If
an examiner’s answer contains a rejection designated
as a new ground of rejection, appellant must within
two months from the date of the examiner’s answer
exercise one of the following two options to avoid sua
sponte dismissal of the appeal as to the claims subject
to the new ground of rejection:
App. 85
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by
filing a reply under § 1.111 of this title with or
without amendment or submission of affidavits
(§§ 1.130, 1.131 or 1.132 of this of this title) or
other Evidence. Any amendment or submission of
affidavits or other Evidence must be relevant to
the new ground of rejection. A request that complies with this paragraph will be entered and the
application or the patent under ex parte reexamination will be reconsidered by the examiner under
the provisions of § 1.112 of this title. Any request
that prosecution be reopened under this paragraph will be treated as a request to withdraw the
appeal.
(2) Maintain appeal. Request that the appeal be
maintained by filing a reply brief as set forth in
§ 41.41. Such a reply brief must address as set
forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a
brief as set forth in § 41.37(c). A reply brief may
not be accompanied by any amendment, affidavit
(§§ 1.130, 1.131 or 1.132 of this of this title) or
other Evidence. If a reply brief filed pursuant to
this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a
request that prosecution be reopened before the
primary examiner under paragraph (b)(1) of this
section.
(c) Extensions of time. Extensions of time under
§ 1.136(a) of this title for patent applications are not
applicable to the time period set forth in this section.
App. 86
See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title
for extensions of time to reply for ex parte reexamination proceedings.
App. 87
37 CFR § 41.50. Decisions and other actions by
the Board
(a)
(1) Affirmance and reversal. The Board, in its
decision, may affirm or reverse the decision of the
examiner in whole or in part on the grounds and
on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance
of the decision of the examiner on that claim, except as to any ground specifically reversed. The
Board may also remand an application to the examiner.
(2) If a substitute examiner’s answer is written in
response to a remand by the Board for further consideration of a rejection pursuant to paragraph
(a)(1) of this section, the appellant must within
two months from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal
as to the claims subject to the rejection for which
the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or
without amendment or submission of affidavits
(§§ 1.130, 1.131 or 1.132 of this title) or other
Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to
the issues set forth in the remand or raised in
App. 88
the substitute examiner’s answer. A request
that complies with this paragraph (a) will be
entered and the application or the patent under
ex parte reexamination will be reconsidered by
the examiner under the provisions of § 1.112 of
this title. Any request that prosecution be reopened under this paragraph will be treated as
a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal
be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other
Evidence, it shall be treated as a request that
prosecution be reopened before the examiner
under paragraph (a)(2)(i) of this section.
(b) New ground of rejection. Should the Board
have knowledge of any grounds not involved in the
appeal for rejecting any pending claim, it may include
in its opinion a statement to that effect with its reasons for so holding, and designate such a statement
as a new ground of rejection of the claim. A new
ground of rejection pursuant to this paragraph shall
not be considered final for judicial review. When the
Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must
exercise one of the following two options with respect
to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both,
App. 89
and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject
the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and
state with particularity the points believed to have
been misapprehended or overlooked in entering
the new ground of rejection and also state all other
grounds upon which rehearing is sought.
(c) Review of undesignated new ground of rejection.
Any request to seek review of a panel’s failure to designate a new ground of rejection in its decision must
be raised by filing a request for rehearing as set forth
in § 41.52. Failure of appellant to timely file such a
request for rehearing will constitute a waiver of any
arguments that a decision contains an undesignated
new ground of rejection.
(d) Request for briefing and information. The
Board may order appellant to additionally brief any
matter that the Board considers to be of assistance in
reaching a reasoned decision on the pending appeal.
Appellant will be given a time period within which to
App. 90
respond to such an order. Failure to timely comply
with the order may result in the sua sponte dismissal
of the appeal.
(e) Remand not final action. Whenever a decision
of the Board includes a remand, that decision shall
not be considered final for judicial review. When appropriate, upon conclusion of proceedings on remand
before the examiner, the Board may enter an order
otherwise making its decision final for judicial review.
(f) Extensions of time. Extensions of time under
§ 1.136(a) of this title for patent applications are not
applicable to the time periods set forth in this section.
See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title
for extensions of time to reply for ex parte reexamination proceedings.
App. 91
MANUAL OF PATENT EXAMINING
PROCEDURE (9TH ED. 2014)
MPEP § 1207.04. Reopening of Prosecution
After Appeal (Rev. Nov. 2013)
The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a
new ground of rejection in response to appellant’s
brief. A new ground as used in this subsection includes both a new ground that would not be proper in
an examiner’s answer as described in MPEP
§ 1207.03, subsection II and a new ground that would
be proper (with appropriate supervisory approval) as
described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new
ground of rejection to an examiner’s answer where
proper under MPEP § 1207.03 et seq., examiners and
their supervisors should consider the degree to which
the rejection previously of record is being changed,
any previous re
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