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Tips for writing a reply brief March 7, 2012

Posted by Brian Schar in Patent prosecution, USPTO.

The Reply Brief is perhaps the most important part of the appeal process. It is the document in which you get to make the final argument and emphasize your strongest arguments.  While the Examiner can respond to the Reply Brief, in theory, I have never seen that happen in practice.

Having written several in the last few weeks, I thought I would set out some thoughts on writing a Reply Brief.

– Keep it short.  Emphasize your strongest arguments.  You don’t need to respond to everything in the Examiner’s Answer.  Ideally, the substantive part of the Reply Brief should be less than 4 pages.  You want the Board, havnig read your Reply Brief, to come away from it with your best arguments in mind.

– Do not cut and paste wholesale from the Appeal Brief.  Cutting and pasting a snippet here and there is fine.  But if you’re just regurgitating what you already wrote in the Appeal Brief, you are wasting your time and wasting an opportunity.

– Leave the wholesale cutting and pasting for the Examiner’s Answer.  There is a tendency for the Examiner to simply repeat the Final Action in the Examiner’s Answer, with a section added at the end to respond to the arguments in the Appeal Brief.  Examiners are busy just like we are, and I understand that.  However, that cutting and pasting often means that the Examiner’s Answer does not consider, argue, acknowledge, or respond to arguments and evidence in the Appeal Brief.  This is great for you.  Point out that the evidence, argument or facts that were unrebutted in the Examiner’s Answer, and that they are admitted as a result.

– Along the same lines, if inadequate technical reasoning for a 103 rejection was provided in the Final Action, it usually is just as inadequate in the Examiner’s Answer.  Hammer that home.  Also, this is a great time to make a succinct but powerful argument for your best grounds of nonobviousness under MPEP 2143.01.

– Similarly, if inadequate reasoning was provided in the Final Action to support a double patenting or 112 rejection, it likely will not be provided in the Examiner’s Answer.  Point that out and argue that the absence of that reasoning in two separate papers is evidence that the Office cannot support that rejection.

– The Examiner’s Answer may argue that limitations from the specification cannot be read into the claims.  However, point out In re Suitco Surface, which is binding precedent: the broadest reasonable interpretation must be consistent with the specification.  Where the Final Action and Examiner’s Answer interpret a claim term at odds with the specification, that interpretation is unreasonably broad.

– Remember that the Board cannot decide petitions, and make sure that you are not appealing petitionable matters.  However, both the Appeal Brief and the Reply Brief are good places to note for the record that there is an outstanding petition on which no decision has been rendered, if that is the case.  The Board will kick the file back to the Examiner for decision on the petition first, which will motivate action.  This has been helpful in my experience in the occasional case in which a petition, a renewed petition, and a second renewed petition (all regarding the same subject) have all been ignored.

– Finally, and most importantly, file the Reply Brief on time!  Unlike an Appeal Brief, the time for filing a Reply Brief is nonextensible.  Don’t do yourself out of your best appellate tool by thinking you can purchase an extension of time for filing it.


1. AAA JJ - March 14, 2012

One thing I always do in a Reply Brief is quote the examiner’s answer. That way, the lifer APJ’s can’t claim that my arguments are new and should have been presented earlier and refuse to consider them. You can drive a locomotive through that hole once you quote the examiner’s answer. Add any argument you want.

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