Quick Post: Board Finds Appellant Must Argue That Examiner Erred

MARK TERRY, ESQ.

In Ex parte Gutierrez, the Board affirmed an examiner’s rejection after the applicant failed to explain how the examiner’s factual findings were wrong. The applicant generally argued that the cited art did not anticipate the claimed composition and lacked sufficient detail.

The Board noted, however, that the appeal did not identify error in the examiner’s specific findings of fact or conclusions concerning the claimed parameters. Without a direct challenge, those findings remained unrebutted.

The Patent Office carries the initial burden of supplying a factual basis for a rejection. Once that basis is stated, an appellant should address it specifically rather than relying on generalized disagreement.

Practical takeaway: An appeal brief should expressly state which examiner findings are erroneous, explain why, and cite supporting evidence. Arguing only that the claim is patentable may not preserve the factual dispute needed to obtain reversal.