Defective Appeal Briefs

In an earlier post, I indicated that 40% of appeal briefs are initially rejected as “defective” for failing to comply with the rules of BPAI brief-drafting practice. I pulled-up the file histories for eleven applications whose appeal briefs were rejected in the calendar year 2009. [Table Below] The most common cause for defect in this group occurred when the applicant fails to list previously cancelled claims in the brief. Although that information is included in the appendix of claims, the briefing rules as interpreted by the appeal specialists require that withdrawn/cancelled claims also be identified in the proper section of the body of the brief.

Application Serial Number

Explanation of Defect


Brief did not contain a statement of the status of all claims (e.g., rejected allowed, withdrawn, objected to, cancelled) or does not identify the appealed claims. (The brief did state that “all of the claims have been finally rejected, and the rejections of claims 1-18 and 23-25 is appealed herein.” However, the brief did not state that claims 18-22 were cancelled. Of course, that information was in the appendix of claims.)


Figures of prior art that were pasted into the brief were “unreadable.” (The figures were identified and the prior art was already in the file).


The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (It appears that the problem here is that the applicant underlined the heading for each argument, but did not put the argument in bold.)


The Brief did not contain a reference to a co-pending application also on appeal.


The Brief did not list the cancelled claims. (Of course, that information was in the appendix of claims.)


The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (The argument section did not exactly parallel the grounds-for-rejection section.)


The Brief did not contain a concise statement of each ground of rejection presented for review. (The applicant was appealing one rejection and stated the ground of rejection being reviewed was “Whether the claims fail to comply with the written description requirement under U.S.C. § 112, first paragraph.” The revised and accepted brief instead asked “Whether claims 1-13 fail to comply with the written description requirement under U.S.C. § 112, first paragraph.” Of course, the original brief also stated that “Claims 1-13 are pending. Thus, claims 1-13 are being appealed.”)


The Brief mis-cited the prior art at one point using the wrong patent number.


The Brief indicated that claim 23 was “cancelled,” but the applicant had not actually filed an amendment to cancel the claim.


The Brief did not list all claims and their status, including those withdrawn. (The amended brief added the information that claims 24-42 had been previously cancelled. Of course, that information was also available in the claim appendix.)


The Brief did not list the cancelled claims although that information was available in the claim appendix.

46 thoughts on “Defective Appeal Briefs

  1. 46

    Order Round,voice democratic state resource thin hear frequently blue his surely support fresh culture action explain cup balance advance owner shape management increasingly garden her training assessment appoint race working status price deep letter prison yes outside pick happen off shoot arise election empty gather properly none dream birth another such design mouth manner therefore responsible outcome media too survive basis left thus keep liberal separate more software theory anybody information into nor victim since rule foreign motion wish document match sometimes an computer week rather absolutely issue certainly around current species appointment song

  2. 44

    if only…
    if only.

    You’ve had cases rejected with no stated ground of rejection?

    Application number, or it didn’t happen.

  3. 43

    “and if they can’t find a qualifying ground of “unless” they allow the case.”

    if only…
    if only.

  4. 42

    The burden is on the office to show that the –unless– conditions are met. If the reference –does not–, then that’s all the applicant need say.

    Actually, the burden is on the office to show a prima facie case that the “unless” conditions are met. After that, the burden is on the applicant to convince the examiner otherwise.

    In any case, the examiner is standing between you and your patent. The only way you’ll get him to stand aside is by being persuasive.

    Office Actions are often unintelligible.

    That’s true. Examiners don’t always have the time to pore over prior art in excruciating detail or compose a similarly detailed rejection. That’s usually a good time to phone the examiner and ask what he meant. It could save you a day of billing and save your client an RCE, but do it anyway.

    the other half is identifying patent applications that merit patenting

    Those are identified by exception. They filter out all the ones that are “unless”, and if they can’t find a qualifying ground of “unless” they allow the case.

  5. 41

    “They get paid for identifying patent applications that fall into that broad “unless” category in the statute.”

    Only half right – the other half is identifying patent applications that merit patenting (it is the examiner that makes the allowance decision).

  6. 40


    The burden is on the office to show that the –unless– conditions are met. If the reference –does not–, then that’s all the applicant need say.

    Examiners appear to do a word search and cite paragraphs that include the words (sometimes) without regard to context. The do not read the cited documents. They do not read the applications.

    Office Actions are often unintelligible.

    90% of Office Actions are pieces of papers that look at a quick glance like they meet the requirements (form) but in actuality don’t come close (substance).

  7. 39

    If you or any other examiner are not familiar enough with the art you’re citing to understand what I’m saying, call me. I’ll explain it.

    Okay, first of all, IANAE = I Am Not An Examiner.

    Second, examiners don’t get paid for talking to you. They get paid for identifying patent applications that fall into that broad “unless” category in the statute.

    You (theoretically) get paid for getting commercially useful claims allowed. If you want to do your job properly, you should be either calling the examiner (he provides his phone number too) or making persuasive arguments in writing.

    Unfortunately, too many agents actually get paid for filing unpersuasive “no it doesn’t” responses and billing the client for an RCE so they can bill the client for drafting yet another unpersuasive response.

    The examiner has already read the art, and his first impression is that it invalidates your patent. If you disagree, you need to set out your argument in a convincing way, and back it up with evidence. If your entire response is “you say A teaches x, I say it doesn’t”, there’s nothing for the examiner to call you about. He still thinks it does, final action.

  8. 38

    The BPAI looks for any excuse to dismiss an Appeal as non-compliant so proofread your briefs a few times! Kappos should consider asking the BPAI to proceed with a substantive review when there are minor, non-substantive mistakes, such as when the information is in the brief but just in the wrong place.

  9. 37


    I put my phone number and email on my responses. If you or any other examiner are not familiar enough with the art you’re citing to understand what I’m saying, call me. I’ll explain it.

  10. 36

    Sympathetic –

    If that’s the case, then the Board needs to be made more independent of the PTO and be rewarded on the basis of getting it right and punished for getting it wrong.

    If someone “repairs” my car, but my car still doesn’t work, I bring it back and get my money back or they reattempt the repair without charging me a second time.

    I see no reason why I should have to pay for the PTO’s mistakes. The present system is absurd.

    Another absurdity is that I have to pay an “independent claim fee” if I simply place a dependent claim that has been found to be “allowable” in independent form.

  11. 35

    I don’t think that the attorney’s drafting skills are (or need to be) in question in this setting.

    Look at it this way. The attorney had (at least) two chances to convince the examiner, and failed both times. He convinced the Board without introducing new facts to the record. That means either his OA responses were drafted in a profoundly unpersuasive way that was later remedied by further care and oral arguments, or the examiner is impervious to reason. I’m willing to believe there are cases all the way along that spectrum.

    Not to mention that I’ve seen way more poorly-drafted OA responses than should ever have existed. Written by registered agents, not pro-se applicants. And I’m not even an examiner.

  12. 34


    whoa boy – go easy on the assumption of “explain to the attorney how to draft an OA response so it actually makes sense and persuades…”, especially as fitting this thread wherein the supposed error is so blatant that a heavy handed punishment is being contemplated.

    The adage of leading a horse to water comes to mind. I don’t think that the attorney’s drafting skills are (or need to be) in question in this setting.

  13. 33

    Maybe offer an accelerated examination as compensation instead.

    And refund the attorney charges for drafting an ESD? Because there’s no way the PTO is accelerating anything without making you do the hard part.

    When a rejection gets reversed on appeal, someone at the PTO should sit the examiner down and explain to him what he did wrong, and explain to the attorney how to draft an OA response so it actually makes sense and persuades the examiner the first time around.

  14. 32

    Les – that’s one of the “too heavy” approaches from the Miller Light commercials.

    Something like that may be workable for rejections that are just flagrantly wrong, as identified by the Board. But even then, the complete fee refund would prevent the Board from ever identifying rejections as flagrantly wrong. Maybe offer an accelerated examination as compensation instead.

  15. 31

    Anyone think that rule might improve examination quality?

    It would improve examination quantity, because no examiner would ever let anything get as far as the Board before reopening prosecution on the flimsiest of pretexts. Besides which, why would the Board ever reverse on appeal if it was going to cost their employer that much money?

    How about “The Office shall give applicant a free involuntary RCE prior to the appeal hearing”, that would have pretty much the same result.

    If you want people to do their jobs, you have to incentivize them to do their jobs (and give them reasonable resources to do the job well), not punish them when someone else reasonably disagrees with them three years later after hearing pleadings in person and possibly new or newly-coherent arguments.

  16. 30

    Noise –

    I don’t think my rule would cause rubber stamping approvals….I think it would just encourage supervisors to do their jobs.

    As it stands now, it is clear that they do not even read the office actions they sign.

  17. 29

    Tinla, it’s not only you. I got here from a link provided in a Google alert. When I tried to get back using the main page I had the same trouble you did….

  18. 28

    Applying the law of unintended consequences to Les’s suggestion, it is easy to see that his suggested rules are too stringent – rubber stamping approve-approve-approve is just as wrong as rubber stamping reject-reject-reject.

  19. 27

    New Appeal Rules:

    1. When a rejection of any claim is reversed, the office shall:

    a. Refund the notice of appeal fee.
    b. Refund the appeal fee.
    c. Pay attorneys fees (or an equivalent amount for pro se applicants) for preparation and filing of:
    Pre-appeal request for review (if such was filed), notice of appeal and appeal brief including any documents accused of being defective and the associated replacement documents).
    d. Place a demerit in the personnel file of any supervisory personal that signed off on the reversed rejection, including any attendees of a pre-appeal request for review. Where the reversed rejection was presented in several office actions, a demerit shall be entered in the personal file of the supervisory personal signing each office action, one demerit for each time their signature is associated with the reversed rejection.

    Anyone think that rule might improve examination quality?

  20. 26

    I’m currently on pg43 of an Examiner’s Answer, which responds to an Appeal brief with a defect I’m ignoring, so I’m getting a kick.

    Why yes, it is a 2 and my life would be easier by sending out the notice.

    I honestly would have guessed the rate to be more around 60-70%, based on what I’ve seen from my docket.

  21. 25

    I’ll bet the Federal Circuit judges think they endure a higher “defective appeals briefs” rate than the BPAI.

  22. 24

    Dear Professor Crouch,

    The posting time for the two articles (see above comment) has not yet arrived!

  23. 23

    Dear broje,

    These two recent articles have no comments as yet as I type this:

    Calculating PTA: PTO to offer “guidance for expediting requests.”

    Patently-O Bits and Bytes No. 314: Defective Appeal Briefs

  24. 21

    Is it just me, or does the comments link say zero comments and lead to a page with no comments? The only way I can read these comments is by clicking on a link in the “Recent Comments” listing to the right of the main page.

  25. 20

    My favorite is the “summary of the claims”. The MPEP states that there must a concise explanation of the subject matter defined in each of the independent claims. But, what they really mean is that they want the claim language re-written. So, the exact same claim language shows up in the appeal brief multiple times to point of being repetitively redundant. It is nothing more than format over substance that they use to waste time.

  26. 19

    It’s all about “workflow,” and its manipulation to achieve outstanding status. This is factored into their rating.

    But that doesn’t make it right, boss.

  27. 18

    Hahaha! An Examiner must get a point for sending out an Action objecting to an appeal brief…

    Perhaps they are just trying to keep their numbers up?

  28. 17

    How about this one:

    Applicant’s argumets [sic] regarding independent and dependent claims merely contains the disagreement with exminer’s [sic] applied art and the explanation of the art that was applied by the examnier [sic]. The appellent [sic] has failed to present contentions with resect [sic] to the grounds of rejections presented and the basis for those contentions. For example, if appellant disagrees that the applied reference does not teach a limitaiton [sic] X, then the appellant should cite that limitation X and argue how/why such limitation is not shown in the applied reference. This format will clearly present appellant’s position and will enable the examiner to answer appellant’s contentions.

  29. 16

    Prof. Crouch,

    For the record, each of these rejections was unambiguously illegal if it occurred prior to December 22, 2009. Prior to that date, USPTO lacked a valid OMB Control Number for **any** BPAI-related information collection. Its new clearance is limited to the express requirements contained in the 2004 rules. All information collection demands made after December 22, 2009, that go beyond those expressly set forth in the 2004 rules are illegal.

    All illegal information collections are subject to the affirmative defenses set forth in 44 USC 3512 and 5 CFR 1320.6. A rejection of an otherwise valid appeal constitutes the “imposition of a penalty” for which USPTO’s violation of the Paperwork Reduction Act is a affirmative defense.

    Readers who have experienced illegal rejections are welcome to contact me for more information at rbbelzer AT

  30. 15

    The man
    you are incorrect in equating an attorney’s failure to identify canceled claims in an appeal brief with the horrors of slavery.

    you may not like the rule, but if you are too careless to follow it, then the fault lies with you. accusing the pto of failing “to advance innovation that would save the lives of millions” because you dont know how to proof read your own appeal brief seems disingenuous.

    slavery, on the other hand, was involuntary servitude forced onto innocent people with terrible violence, which actually did result in the loss to society of innocent lives and the many contributions that could have been made by people who were enslaved.

    seriously, do you get paid by your clients for blaming your carelessness on others? when you equate your carelessness as the moral equivalent of slavery, you do an injustice to all those who suffered the injustice and horror of slavery.

  31. 14

    My beef is the rejection of briefs for not pointing to the support in the specification for each claim element, although such support IS provided as required by the rules. It comes out that the clerks checking the briefs expect to see the information in tabular format, a requirement of an internal memo that is not referenced in the rules. Thus, they reject a brief if the information appears in paragraphs.

    Of course briefs will be kicked back when the PTO employs that type of system.

  32. 13

    “The Brief did not list the cancelled claims. (Of course, that information was in the appendix of claims”

    Does information regarding canceled claims belong in the claim appendix? I’m told that briefs have been bounced for including claim status identifiers in the appendix and for including claims not under appeal in the appendix.

  33. 12

    How about that:
    The point is that the ideology that caused the implementation of rules which hinder innovation are dangerous and harken back to the 19th Century. We have no time for overly formalistic rules in today’s society. On the point of slavery, would it be incorrect to state that the failure to advance innovation that would save the lives of millions is at least as terrible as the institution of slavery? The USPTO is an important institution for the advancement of the human race. The importance of its mission should not be understated. Along those lines, the practice of our Federal Government to monopolize the minds of the top 5% of this nation, such as in the national laboratories, is viewed by some as equally destructive to the advancement of the human condition.

  34. 11

    Really, you should get a grip.

    “Afterall George Bush was only a C student in college and Dick Cheney I am not sure held any degree worthy of note.”

    and each of them achieved a higher position than you did with your straight-A, Ivy-league degree. Seriously, there’s plenty to complain about at the PTO that you don’t need to try to build yourself up at the expense of others.

  35. 10

    “the formalisitc days of old when men could hold men in bondage based upon the color of their skin and ships of commerce moved at the whim of the trade winds.”

    what’s your point, that identifying canceled claims in an appeal brief is as bad as the horrors of slavery? seriously, get a grip.

  36. 9

    Off-topic, let me take your hypothetical a step further, because this has always bothered me. Say you have a client with an application for a computerized airplane lavatory reservation system and FIG. 1 shows a plane in communication with a base station, FIG. 2 shows a cross-section of the plane with lavatory, indicator lights,an RF transmitter, and a PC all wired together; FIG. 3 shows a passenger in a seat having a button on the arm rest and clearly observing the indicator lights, FIG. 4 shows a flow-chart of the computer method, and FIG. 5 shows a relieved looking pilot waving from the cabin. The first independent claim is to a method for reserving a bathroom on an airplane (as performed by the method of FIG. 4), the second is to a beauregard claim of the first, the third is to a computer system with processor and memory to run the beauregard claim, the fourth is an airplane including the third, the fifth is a communications system including the base station and the fourth, and a sixth independent claim is to a method of reserving an airplane lavoratory comprising steps performed by the passanger, the onboard computer, and the base station. The species election requirement requires the applicant to select one of FIGs. 1-5 to prosecute and identify the claims that read thereon. The client wants to prosecute the beauregard claim, but there isn’t a drawing that shows a computer-readable medium (though support is provided in the spec.). Short of that, the client wants to prosecute the sixth independent claim. Support is found in FIGs. 1, 2, and 3, though no single drawing shows all of the elements. The client also wants to know why, if this is a species election, aren’t these separate genera, and if they are themselves all species of an indentifiable genus, what is that genus? In other words, why isn’t this a restriction requirement rather than a species election tied to drawings that don’t map one-to-one to the independent claims (despite that a cursory inspection shows at least one does)? Points deducted for discussions of Bilski.

  37. 8

    Assume an application sets forth three different ways (A, B, and C) of mixing the substance..

    If they were each separate alternatives I would agree that they are three different species and an election requirement is likely proper.

    How about if they can be used separately or together, e.g., A, AB, AC, ABC, B, BC, and so forth? Is it a proper election of species to require an election of A, B or C? (Or should the election also include AB, AC, ABC, etc.?)


  38. 7

    I think that the USPTO may want to rethink its appeals rules when the President of the United States is complaining that they are too slow in issuing patents and doing things, shall we say, in a non-forward manner. Any rules that result in delay that does not advance the efficiency of the operatiosn of the USPTO should be suspect. This may be easily verified by determining the actual time it takes the Board to decide a case under the new rules when compared to a case presented under the old rules. This is not the first time that such an undertaking to frustrate innovation by the USPTO. Take the claim amendments and having to identify whether the claim was previously presented, original, currently amended and the like. When these rules were first introduced I was flabbergasted. I remember in law school how the Federal Rules of Civil Procedure were paintstakingly changed so as to prevent the age-old practice of preventing parties from having the merits of their case heard, because the wrong words were used in the pleading. With the stroke of a pen the USPTO turned-its-back and that of the Federal Government to the forward looking legal theorists of the early 20th Century and returned us to the formalisitc days of old when men could hold men in bondage based upon the color of their skin and ships of commerce moved at the whim of the trade winds. Truly a further step backwards is seldom seen in the history of mankind. Imagine a cure for aids never seeing the light of day because the USPTO did not like the use of previously corrected or some other phrase it found unsuitable.
    It is not suprising that this agency, as well as other Federal Agencies were harmed by the last administration. Afterall George Bush was only a C student in college and Dick Cheney I am not sure held any degree worthy of note. Truly no less qulified administrators have ever held sway of the White House in the history of our great nation.

  39. 6

    “Rather than wasting space and time duplicating the same thing for the CRM claim . . .”

    How much time would you have “wasted,” really, with a simple cut/paste???

  40. 5


    Great Job on highlighting issues before the BPAI recently. The BPAI is often my last resort to get a fair consideration of the application. If the BPAI starts playing games too, and it looks like they are, then the whole office is shot. Eventually maybe enough CAFC appeals would fix this, but it would be a shame to have to go that route.

  41. 4

    Consider that much of this coincides with the PTO proposal of appellate rule changes that limit the pages, font size, etc. while adding requirements for additional information that eat up pages.
    You may want to consider that much of this technical rejection stuff requires the appellant to add more text. In light of this, the emphasis on technicalities that eat up space makes more sense. Limit the space, add space eating requirements, and strictly enforce limits so that applicants can’t appeal all issues.
    It even fits with the board’s limiting scope of reply brief.

  42. 3

    I had a method claim which I pointed out where exemplary support for the features could be found in the original disclosure. Then I had a computer readable medium claim that had instructions for executing the method. Rather than wasting space and time duplicating the same thing for the CRM claim, I wrote that support can be found at the same/similar portions as the method claim.

    This was rejected as defective for not pointing out the exemplary support for the CRM claim.

  43. 2

    I would also be interested to see when the Notice of Defective Brief is issued.

    Some Notices are sent by the processing people, typically within a few weeks of filing the brief. Other notices, however, are sent by the Examiner, almost always at the two-month production deadline after the brief has been entered. Notices in the latter category are often unreasonable – the Examiner looks for anything that could be interpreted as an error and bounces the brief to get it off the docket and avoid an answer. This practice also typically adds 3+ months to the appeal time, from first appeal brief filed to replacement brief filed.

  44. 1

    I started looking at these to see how much delay the PTO was able to squeeze out of each, but after looking at the first two cases listed it was apparent that the sampling was too close to the present date to get that kind of information. It would be more interesting to look at Notices of Defective Appeal Brief mailed in 2008. I picked a third case at random further down the list, 11/484,214, and was surprised to not find the alleged Notice, and not surprised to see the Examiner reversed, and very surprised to see that the span from appeal brief to decision was less than 6 months!

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