Ex parte Grado

May 12, 2011 – Blog Post

In a rather unusual manner, the Board of Patent Appeals and Interferences (BPAI) in Ex parte Grado (Appeal No. 2010-005832 in U.S. application serial no. 10/801,951), issued an order in an ex parte appeal requiring the Appellants to brief issues on restriction practice and Markush when restriction is not at issue, rather an obviousness type double patenting rejection over an earlier filed patent.

Citing 35 U.S.C. 121 the Board requires briefing on the apparent conflict between the authority provided in section 121 and case law (In re Weber, 580 F.2d 455,458 (CCPA 1978) allowing “the inventor to claim the invention in the way he chooses (subject to the other requirements of law), including claiming multiple independent and distinct inventions in a single claim.” The Board also requires briefing on the aspect of whether a general formula, having a general property with a single step of administration is sufficient to satisfy “unity of invention.”

Rarely, if ever, does the Board require further briefing on an issue. However, the Board has that plenary authority and clearly exercised it in this case That Commissioner Stoll joined in his capacity as an APJ is also noteworthy and may indicate a broader PTO standard or “Examiner training guideline” on these issues.