Are Your Claims Ready For Appeal?

The appeal process during patent prosecution can be long and expensive. According to U.S. Patent and Trademark Office statistics, the average pendency of an appeal is over 30 months. Given this substantial time delay, and the expense associated with the appeal process, it is critical that claims in an application be in condition for appeal.

Practitioners are prepared for appeals where the applicant and the examiner disagree on claim construction, but a unique situation arises when the Board of Appeals and Interferences (hereinafter, the “Board”) disagrees with the claim construction advanced by both the applicant and the examiner. Such was the case in a recent Board decision in Ex parte Barthel (Appeal 2009-010789, in application serial no. 11/035,720, decision issued April 30, 2012).

The invention in Ex parte Barthel pertains to a system and method for addressing at least two subscribers in a redundant communications network. Representative Claim 10 recites, inter alia, “the subscribers are each permanently assigned a first physical address that is unique in the communication network, the subscribers forming a group such that the subscribers in the group are redundant in respect to each other.” According to the Board, the applicants and examiner construed this claim language to mean “each subscriber ha[ving] a unique physical address that…each subscriber is individually accessible in the communication network via their respective physical address” (emphasis in original). The Board disagreed with this construction

because claim 10 recites “the subscribers are each permanently assigned a first physical address that is unique in the communication network….” Thus, the claim recites that plural “subscribers” are assigned a singular physical address.” No basis is found in the record to support Appellants’ contention aside from improperly reading an embodiment into the claim.

Given that the examiner had agreed with and addressed applicants’ claim construction in the appealed rejection, the Board stated that the “record problematically does not identify the Examiner as relying on O’Riordan’s disclosure for assigning the same IP and MAC address to multiple routers.” Consequently, the record failed to identify where a claimed limitation is taught and the Board reversed the examiner’s rejection.

However, the Board’s finding of examiner error did not produce a “win” for applicants. Rather, the Board utilized its authority under 35 C.F.R. § 41.50(b) to issue a new ground of rejection based on the Board’s claim construction and using the same prior art cited by the examiner. 37 C.F.R. § 41.50(b) leaves applicants with the options of reopening prosecution or requesting rehearing “upon the same record,” which essentially renders the time consuming appeal process a wasted effort. Thus, the lesson to be learned from Ex parte Barthel is that claims should be precisely drafted and carefully reviewed during prosecution with a view toward appeal.