ARUNACHALAM case informs practitioners of "what to do" following a new ground of rejection

Dr. Lakshmi Arunachalam owns U.S. Patent No.
5,778,178, which has been undergoing reexamination
since November 2008. In September 2014, the Patent
Trial and Appeal Board affirmed the rejection of claims 9–
16, but designated a new ground of rejection for claim 16.
Dr. Arunachalam elected to reopen prosecution of the
claims, after which the examiner issued a final rejection
in June 2015. Rather than appeal the examiner’s final
rejection to the Board, Dr. Arunachalam filed the instant
appeal. Because we lack jurisdiction to consider non-final
appeals from the Patent Office, we dismiss for lack of
jurisdiction.



As to "practice pointers"


“We have held that § 1295(a)(4) should be read to incorporate
a finality requirement.” Loughlin v. Ling, 684 F.3d
1289, 1292 (Fed. Cir. 2012) (citing Copelands’ Enters., Inc.
v. CNV, Inc., 887 F.2d 1065, 1067–68 (Fed. Cir. 1989) (en
banc)). Our adoption of a finality rule “finds strong support
both in the tradition of the federal courts system and
in sound public policy.” Copelands’ Enters., 887 F.3d at
1067 (citations omitted). “As indicated by the Supreme
Court, requiring a party to await a final decision and to
raise all claims of error in a single appeal ‘emphasizes the
deference that appellate courts owe to the trial judge,’
‘avoid[s] the obstruction to just claims that would come
from permitting the harassment and cost of a succession
of separate appeals,’ and ‘promot[es] efficient judicial
administration.’” Id. (quoting Firestone Tire & Rubber
Co. v. Risjord, 449 U.S 368, 374 (1981)). Thus, we lack
jurisdiction to hear a non-final appeal from the Patent
Office.
Here, there can be no doubt that the Patent Office’s
actions are non-final for the purposes of judicial review
and that Dr. Arunachalam’s appeal is premature. A
patent owner dissatisfied with an examiner’s rejection of
a claim in reexamination may proceed with a two-step
appeals process. First, pursuant to 35 U.S.C. § 134(b)
(2002), “[a] patent owner in any reexamination proceeding
may appeal from the final rejection of any claim by the
primary examiner to [the Board] . . . .” Second, if the
patent owner is dissatisfied with the Board’s final decision,
the patent owner may appeal the decision to this
court. 35 U.S.C. § 141 (2002) (“A patent owner . . . who is
in any reexamination proceeding dissatisfied with the
final decision in an appeal to the Board . . . under section
134 may appeal the decision only to the United States
Court of Appeals for the Federal Circuit.”).

A new ground of rejection, however, is not a final decision
for the purposes of judicial review. See 37 C.F.R.
§ 41.50. After a new ground of rejection, the patent owner
can either (1) reopen prosecution and, if the rejection
cannot be traversed, again appeal to the Board or (2)
pursue rehearing at the Board, after which an appeal to
this court may be filed. See id. Here, Dr. Arunachalam
elected to reopen prosecution and the examiner issued a
final rejection. Pursuant to § 134(b), Dr. Arunachalam
may appeal the examiner’s decision to the Board. And
only after the Board issues a final decision can we exercise
jurisdiction to review the Board’s decision.