Can formal objections and rejections be combined in a single appeal to the PTAB?
No, formal objections and rejections should not be combined in a single appeal to the Patent Trial and Appeal Board (PTAB). The MPEP is clear on this point:
These formal matters should not be combined in appeals to the Board.
This guideline is based on the different nature and review processes for objections and rejections:
- Rejections involve the merits of the claims and are reviewable by the PTAB.
- Objections relate to formal matters and are addressed through petitions to the Director of the USPTO.
The MPEP further emphasizes: the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.
Therefore, when preparing an appeal, patent applicants and attorneys should focus solely on substantive rejections and not include formal objections. Objections should be addressed separately through appropriate USPTO procedures.
To learn more: