Guidance Memorandum for the Ex Parte Appeals Process

The memorandum consolidates into a single source the PTAB's existing internal practice for writing ex parte appeal opinions and handling related procedures, and states that earlier Board memoranda on the topic are no longer in effect. It covers opinion form, remands, mooted appeals, petitionable matters, missing references, ODP rejections, new grounds of rejection (examiner's answer and Board), additional briefing under 37 C.F.R. § 41.50(d), translations, and per curiam opinions. It also states that no oral or other guidance controls Board action beyond formal written guidance. Appellants can see how panels are expected to write and handle appeals. Panels reach all rejections on affirmance, frame reversals around a dispositive issue, and treat unchallenged examiner characterizations of references and uncertified translations as waived. Appellants who think an examiner's answer contains an undesignated new ground must petition under 37 C.F.R. § 1.181(a) within two months. Otherwise they are limited to arguing the rejections as stated. Appellants who object to an uncertified translation bear the burden of showing it is inaccurate. The memorandum rests on 35 U.S.C. §§ 6(b), 131 and 134, 37 C.F.R. §§ 41.37(c)(1)(iv), 41.39(b), 41.40 and 41.50(b) and (d), the MPEP, and cases such as In re Kumar and In re Kronig on due process and new grounds. WHAT IT DOES: Panels are expected to reach all grounds of rejection on affirmance, with two exceptions: pro forma reversal of prior art rejections where indefiniteness would require speculation about claim scope, and certain provisional ODP rejections. On reversal, panels frame and address only the dispositive issue(s). Claims are grouped only within the same ground of rejection. A panel cannot hold an appeal brief non-compliant and should send undecided critical petitions, mooted appeals and unclear after-final amendment entry to the Case Management Branch. The memorandum gives recommended handling for missing references, ODP and provisional ODP rejections, and new grounds in examiner's answers. It makes a Board new ground discretionary, requires it to be unanimous, and says an affirmance resting on a new or modified rationale may be designated a new ground. Section 41.50(d) additional briefing is for rare circumstances. Certified translations are not required, and the Board will no longer request them from the Examining Corps. Per curiam opinions are attributed to the whole panel. WHO AND WHEN: It is addressed to all PTAB users and applies to ex parte appeals at the Board, including merits panels reviewing appeal briefs, reply briefs and examiner's answers. It is dated July 13, 2023. The text states no separate effective date and says it describes existing practice. KEY QUOTE: "A panel of the Board may issue a per curiam decision." (Section VI, p. 18) EARLIER GUIDANCE AFFECTED: Previous memoranda on this topic issued by the Board are no longer in effect, and some of the overridden guidance had been outdated and not in effect for years. The document does not name those memoranda. PRACTICE TIP: Raise every needed challenge at the right time and in the right forum. Petition under 37 C.F.R. § 1.181(a) within two months of an answer with an undesignated new ground. Challenge an examiner's characterization of a reference or the accuracy of an uncertified translation with evidence or argument before the Board, because silence is treated as waiver. Make separate arguments for claims you do not want grouped. Issued by Scott R. Boalick, Chief Administrative Patent Judge.