Ex parte Asare

July 15, 2011 – Blog Post

In Ex Parte Asare (Appeal 2009-007451 of Appl. Serial No. 10/726,192), the Appellants twice appealed to the Board of Patent Appeals and Interferences (BPAI) and once requested for rehearing. Despite these actions, the Appellants are still without a decision on the merits of a prior art rejection from the BPAI.

The claims on appeal, as amended in response to a second non-final Office Action, include a set of method claims and a set of computer program product claims. In September 2007, the Examiner rejected all of the pending claims as anticipated in a third Office Action and the Appellants filed the first appeal. In March 2008, the Examiner reopened prosecution and rejected all of the pending claims as anticipated over a different reference in a fourth Office Action. In response, the Appellants filed the second appeal.

In its decision, the BPAI entered a new ground of rejection under 35 U.S.C. § 101 and vacated the prior art rejection stating that the Applicants were “barred at the threshold by § 101,” citing to In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009). In this respect, it should be noted that the pending claims were last amended prior to both the In re Nuijten, 500 F.3d 1347 (Fed. Cir. 2007) and Bilski v. Kappos, 130 S.Ct. 3218, 561 U.S. ___ (2010) decisions. A § 101 rejection that might be made today may not have been made in the preceding prosecution.

Given that rejections under § 101 are often resolved with an amendment or explanation and do not prevent the BPAI from being able to understand the proper scope of the claim as might be the case with an indefinite claim under § 112, second paragraph, such an approach to sidestep addressing the prior art rejection is at the very least unfair to the Appellants.

Further, this approach is counterproductive to clearing the backlog at the BPAI as it could be expected that this application will go back to the Examiner to resolve the § 101 rejection and be right back at the BPAI for a decision on the merits of the same prior art rejection with the only difference being a different panel and a much longer pendency.

In response to the BPAI decision, the Appellants filed a request for rehearing asserting that the BPAI can only affirm, reverse, remand or enter a new ground of rejection and that vacating a rejection is not one of those options. The Appellants asserted that the BPAI must still present a finding with respect to all appealable issues in addition to any new ground of rejection that may be entered. Also, the Appellants presented arguments traversing the § 101 rejection.

In the Decision on the Request for Rehearing, the BPAI sidestepped the prior art rejection again. Despite being clearly identified as an issue in the opening paragraph and several pages of arguments, the BPAI cited to the conclusion of the Appellants’ brief stating that the Appellants did not ask for a remedy regarding the vacated prior-art rejection (they only requested reversal of the § 101 rejection). Therefore, according to the BPAI, they did not have to reach the issue.

In addition to ensuring that all claims presented to the BPAI for review comply with all statutory requirements, this decision demonstrates that when appealing to the BPAI, it is important to make it clear exactly what it is the Appellants are asking the BPAI to do.