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Appeal brief practice alert December 30, 2008

Posted by Brian Schar in Patent prosecution, USPTO.

The USPTO continues to intensify the hypertechnicality of its interpretation of the existing appeal brief rules.  Today I received a notice that an application on appeal was abandoned, because the appeal brief was noncompliant with regard to two separate points.  The kicker is that I had received a Notice of Non-Compliant Appeal Brief (who doesn’t?), but neither of those points were raised in the Notice.  

Due process issues aside, the USPTO complained that I had not referred to the specification by page and line number in the Summary of Claimed Subject Matter.  This is an application that I filed with paragraph numbers in the specification instead of line numbers, which has been standard practice for some time now.  However, the “gotcha” in MPEP 1205.02(v)  is that the Summary of Claimed Subject Matter “must refer to the specification by page and line number.”  This requirement is contrary to standard practice and adds no value or clarity whatsoever to the appeal process, and serves solely as yet another way for the USPTO to dispose of appeals other than on their merits. 

Nevertheless, in order to prevent the summary rejection of your appeal briefs, make sure that you count your line numbers and use them in your appeal brief.  It doesn’t make any sense, but that’s the way it is.

In fact, forcing the Examiners to count line numbers on pages that are not line-numbered creates more work for them than simply pointing to paragraph numbers.   Perhaps it would be a good idea to line-number the pages of the specification and also paragraph-number the paragraphs, for those who want to make things easier for the Office.


1. Ken Ohriner - January 5, 2009

Don’t feel too bad about that. I had an appeal brief recently rejected as non-compliant on the basis that “The Summary of the Claimed Subject Matter does not provide enough detail”–that’s it–even though the summary was two full pages.

2. Amazed Patent Lawyer - April 24, 2009

I am incredibly surprised that there does not appear to be more written about this subject. Non-compliant appeal briefs are now one of the biggest headaches at our firm. Each one seems more ludicrous than the last. For example, having an Evidence Appendix with an empty body was not acceptable- we needed to write “None” and resubmit the brief. Unbelievable.

Another forum has mentioned some similar issues with appeal briefs:

But it is from 2007, and the problem only seems to be getting worse.

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