Esplin & Associates Obtains Positive Result in Federal Circuit Appeal

Written by Ben Esplin

On June 20, 2025, our first appeal at the Court of Appeals for the Federal Circuit was resolved when an unopposed motion (included here) was entered in the case of In re Raggio. The motion acknowledges the Patent Trial and Appeal Board (“PTAB”) relied on undesignated new grounds of rejection in its consideration of our appeal in U.S. Patent Application No. 16/044,281 (“the ‘281 Application”). While our Opening Brief also included arguments regarding the inadequacy of the new grounds of rejection, which will now be made at the U.S. Patent and Trademark Office (“USPTO”), instead of the Federal Circuit, the result is positive for a few reasons and we consider it a “win” for our client.

This is the first time I have been involved in an appeal to the Federal Circuit of a decision at the USPTO. It was a pleasure to work on the Opening Brief with co-counsel Martin Bader of Sheppard Mullin Richter & Hampton, LLP, and his team. Martin is a former colleague, a personal friend, and an accomplished trial and appellate patent attorney.

In accordance with 37 C.F.R. § 41.77, “new grounds” of rejection relied on in an appeal decision from the PTAB should be designated as such, and the applicant is then entitled to reopen prosecution with the Examiner to address the new rejection(s) articulated in the appeal decision. Upon receiving the appeal decision from the PTAB, we timely filed a Request for Rehearing, in which we not only contested the propriety of the rejections, but also argued the decision relied on undesignated “new grounds” for these rejections. The PTAB responded by summarily reaffirming the rejections, in part by arguably articulating even further “new grounds” of rejection, and failed to even affirmatively address our arguments directed to the specific “new grounds” of rejection which form the basis for the unopposed motion.

In recent years, appeals to the PTAB have been disappointing. While our results have remained fairly strong, especially on a relative basis, it has become more challenging to win at the PTAB. Further, adverse decisions routinely seem to rely on “new grounds” of rejection, and/or ignore whole sections of argumentation raised throughout the briefing and oral hearing. In short, my faith in the PTAB has waned significantly since its inception by the America Invents Act in 2012 (which vastly expanded the former Board of Patent Appeals and Interferences), and counseling clients on how to deal with appellate “affirmances” of at least potentially erroneous rejections is one of the most difficult aspects of this practice.

In the present case, it is frustrating it took an appeal to the Federal Circuit and the preparation and filing of a full Opening Brief just to get consideration by the Solicitor’s Office of the USPTO of our arguments regarding the “new grounds” of rejection relied upon by the PTAB. The cost associated with the Federal Circuit appeal was nearly the total cost of preparation and prosecution of the ‘281 Application to this point, and now there will be additional cost to address the new rejections with the Examiner at the UPSTO. Nevertheless, it is empowering to add another weapon to our arsenal for protecting client innovation if the PTAB issues decisions which are clearly erroneous, and we look forward to pursuing issuance of a patent in the ‘281 Application.

If you or your company are currently facing rejection(s) at the USPTO in a patent application directed to high value innovation and would like to discuss strategies for overcoming the rejection(s), first with the Examiner, and ultimately through appeal, please reach out to schedule an introductory consultation.