Wednesday, March 11, 2015

PTAB - Effective Use of Claim Grouping in Appeals

The Patent Trial and Appeal Board (PTAB) published an article Effective Use of Claim Grouping in Appeals that presents how to effectively present arguments to the Board.

The article states "when transitioning from examination to appeal, an appellant moves from negotiating patentable claims to resolving disputed patentability issues. The appeal brief normally is the Board’s first exposure to an appellant’s case, and it is the appellant’s first opportunity to persuade the panel to rule in its favor. Therefore, an appellant should take care to craft a clear and persuasive brief that quickly educates the Board panel about the issues and technology, and focuses on appellant’s strongest arguments, while avoiding the introduction of any new issues."

Although the article has some good advice -- focus most if not all of your appeal brief on winning issues, I think its advice to group claims is risky because many PTAB decisions use claim groupings as a mechanism to support affirmance of rejection of the entire group.

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