In an earlier post, I indicated that 40% of appeal briefs are initially rejected as "defective" for failing to comply with the rules of BPAI brief-drafting practice. I pulled-up the file histories for eleven applications whose appeal briefs were rejected in the calendar year 2009. [Table Below] The most common cause for defect in this group occurred when the applicant fails to list previously cancelled claims in the brief. Although that information is included in the appendix of claims, the briefing rules as interpreted by the appeal specialists require that withdrawn/cancelled claims also be identified in the proper section of the body of the brief.
|
Application Serial Number |
Explanation of Defect |
|
9/967,742 |
Brief did not contain a statement of the status of all claims (e.g., rejected allowed, withdrawn, objected to, cancelled) or does not identify the appealed claims. (The brief did state that "all of the claims have been finally rejected, and the rejections of claims 1-18 and 23-25 is appealed herein." However, the brief did not state that claims 18-22 were cancelled. Of course, that information was in the appendix of claims.) |
|
10/159,079 |
Figures of prior art that were pasted into the brief were "unreadable." (The figures were identified and the prior art was already in the file). |
|
9/983,493 |
The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (It appears that the problem here is that the applicant underlined the heading for each argument, but did not put the argument in bold.) |
|
10/223,904 |
The Brief did not contain a reference to a co-pending application also on appeal. |
|
8/873,974 |
The Brief did not list the cancelled claims. (Of course, that information was in the appendix of claims.) |
|
10/711,517 |
The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (The argument section did not exactly parallel the grounds-for-rejection section.) |
|
11/484,214 |
The Brief did not contain a concise statement of each ground of rejection presented for review. (The applicant was appealing one rejection and stated the ground of rejection being reviewed was "Whether the claims fail to comply with the written description requirement under U.S.C. § 112, first paragraph." The revised and accepted brief instead asked "Whether claims 1-13 fail to comply with the written description requirement under U.S.C. § 112, first paragraph." Of course, the original brief also stated that "Claims 1-13 are pending. Thus, claims 1-13 are being appealed.") |
|
10/660,659 |
The Brief mis-cited the prior art at one point using the wrong patent number. |
|
10/277,646 |
The Brief indicated that claim 23 was "cancelled," but the applicant had not actually filed an amendment to cancel the claim. |
|
10/914,894 |
The Brief did not list all claims and their status, including those withdrawn. (The amended brief added the information that claims 24-42 had been previously cancelled. Of course, that information was also available in the claim appendix.) |
|
10/804,237 |
The Brief did not list the cancelled claims although that information was available in the claim appendix. |
