A First Glance at the Proposed New BPAI Rules
I've finally had the chance to look over the Proposed New BPAI Rules. Interesting stuff.

All those new [proposed] requirements for Appeal Briefs...it makes me glad that I'm working on this side of the fence.

One thing that caught my eye was the provision of rule 41.37(o) where an Appellant is required to identify at what point in prosecution their argument was first made to the examiner, or to state that the argument is a new one that has not been previously made.

This provision got me wondering...why are Appellants even allowed to raise new arguments in the appeal brief???

Of course, the knee-jerk answer would be that, well, examiners are allowed to raise new grounds of rejection in an Examiner's Answer (albeit with a director's signature), so it only seems fair that Appellants be allowed to raise new arguments in the Appeal Brief. The thing is, though, I still have issues with this (and I'm not going to get into the issue of examiners' new ground of rejection...I personally don't think it's a great idea, either).

First of all, I always thought that an appeal was supposed to resolve an impasse between the examiner and attorney/applicant. But if the Appellant is going to raise new issues that haven't yet been presented to the examiner, where's the impasse? It just doesn't seem to me as if the application is ripe for appeal if the Appellant has arguments that still have yet to be made to the examiner.

Perhaps a better question is why the Appellant thinks that submitting an Appeal Brief with new arguments is a good idea.

Consider the following hypothetical situation. The examiner sends out a first action, rejecting all of the claims. As often happens, the examiner spends more time on the independent claims than on some of the 'down-the-claim-tree' dependent claims, so perhaps the rejections of the independent claims are more solid than the rejections of some of the dependent claims. Throughout prosecution, the attorney/applicant argues only the rejections of the independent claims. The application is eventually appealed. In the Appeal Brief, the Appellant presents their arguments regarding the independent claims, but also presents brand new arguments regarding the rejections of some of the dependent claims.

What is likely to happen?

Well, if the rejection of the dependent claim(s) is questionable enough, and/or the Appellant's argument is persuasive enough, then the examiner might withdraw the rejection and re-open prosecution. Applicants want to spend the money to have an Appeal Brief written, including these new arguments, just to have the thing re-opened?? Haven't I heard attorneys bitching left and right about examiners re-opening prosecution after the applicant has spent money to have an Appeal Brief written?

Or perhaps the examiner will forge ahead and argue their case regarding the rejections of the dependent claims in the Examiner's Answer. If the rejections of the independent claims are reversed, then presenting the new arguments regarding rejections of the dependent claims was unnecessary. If the rejections are affirmed-in-part (the rejections of the independent claims are affirmed, but the rejections of the dependent [newly argued] claims are reversed), where does that leave the Appellant? That doesn't seem to be a great position to be in, either.

Wouldn't it have been better to have raised those new issues during prosecution and possibly saved the time and money of an appeal?

I guess that I just don't understand why raising new arguments in an Appeal Brief is a good idea, for either the examiner or for the Appellant.