Preface
37 CFR 1.198 only comes into play if you have filed an appeal and received a decision by PTAB (Patent Trial and Appeal Board – the old name was BPAI (Board of Patent Appeals and Interference)). Unlike many countries where when you appeal your case and the “board” reverses the examiner’s rejection the claims get issued – not so in the US. Instead the PTAB decision goes back to the examiner in the case. Many examiners consider this to have been their best shot and if they were reversed will allow the claims to issue. Others appear to be on a vendetta of “I’ll show that applicant” and they do another search and another rejection (often with the same art). The code section that allows this nonsense is 37 CFR 1.198.
37 CFR § 1.198 Reopening after a final decision of the Patent Trial and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
Quick Discussion
§ 1.114 – has to do with the applicant filing a RCE (Request for Continued Examination).
§ 41.50 – has to do with PTAB taking further control.
Now you might be thinking “without the written authority of the Director” is referring to “the Director” of the USPTO, the head honcho, the Big Kahuna, The Director of the United States Patent and Trademark Office” – guess again – “Director” means a TC (Technology Center) Director – see MPEP 1002.02(c)1. and MPEP 1214.07.
See http://www.uspto.gov/patent/contact-patents/patent-technology-centers-management for a list of TC Directors.
So what you will get is a rejection with language like this “The Technology Center Director has authorized reopening the prosecution under 37 CFR 1.198 for the purpose of entering the new rejection by signing below.” and the TC Director’s signature will be at the end of the Office Action.
Conclusion
- If the PTAB reverses the examiner's rejections on claims - don't count on the claims being allowed.
