May 27, 2016

Applicant Cannot Bypass the PTAB to get to Federal Circuit

By Bryan K. Wheelock, Principal

In In re Arunachalam, [2016-1560] (May 27, 2016), the Federal Circuit dismissed  Arunachalam direct appeal to the Federal Circuit from the final rejection of his claims in prosecution following a new ground of rejection entered by the PTAB.

Under 28 U.S.C. § 1295(a)(4)(A), the Federal Circuit has exclusive jurisdiction over an appeal from a “decision” of the Board.  The Federal Circuit has held that § 1295(a)(4) should be read to incorporate a finality requirement.  Thus the Federal Circuit concluded that it lacked jurisdiction to hear a non-final appeal from the Patent Office.  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 the Federal Circuit exercise jurisdiction to review the Board’s decision.