1311 Final Decision in Appeals from Expungement and Reexamination Proceedings
For general information concerning final decisions in proceedings before the Board, see TBMP § 803. What follows below is information pertaining specifically to final decisions in ex parte appeals to the Board from expungement or reexamination proceedings. [ Note 1.]
In determining an ex parte appeal, the Board reviews the appealed decision of the examining attorney to determine if it was correctly made. The Board’s review will address the goods or services challenged in the petition and subject to appeal, as well as noncompliance with any requirement properly subject to appeal. The Board need not find that the examining attorney’s rationale was correct in order to affirm the decision, but rather may rely on a different rationale. [ Note 2.] Further, the examining attorney is not precluded from raising, during appeal, new arguments and/or additional case citations in support of the decision. [ Note 3.]
When the Board has issued its final decision in an ex parte appeal, the examining attorney is without jurisdiction to take any further action therein. [ Note 4.] Similarly, the Board has no authority, either in its final decision on appeal or thereafter, to remand the case to the examining attorney. [ Note 5.]
NOTES:
1. See In re Information Builders Inc., 2021 USPQ2d 228, at *1 n.1 (TTAB 2021) (defining "final decision" as final dispositive ruling that ends litigation on the merits before the Board).
2. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1401-02 (TTAB 2018) (Board declined to consider second rationale raised only in an advisory manner during prosecution but raised again by the examining attorney’s brief because it was unclear that applicant had "a full opportunity to address the alternative rationale … prior to appeal."); In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (applicants’ failure to address refusals is a basis for affirming the examining attorney’s refusal on all grounds); In re AFG Industries Inc., 17 USPQ2d 1162, 1163 (TTAB 1990); In re Avocet, Inc, 227 USPQ 566, 567 (TTAB 1985); In re D.B. Kaplan Delicatessen, 225 USPQ 342, 343 n.2 (TTAB 1985). Cf. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1009 (Fed. Cir. 1988); Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 488 (CCPA 1976); Hunt v. Treppschuh and Hentrich, 523 F.2d 1386, 187 USPQ 426, 428 (CCPA 1975).
3. See In re D.B. Kaplan Delicatessen, 225 USPQ 342, 342 n.2 (TTAB 1985).
4. See 37 C.F.R § 2.142(d)(2); Cf., e.g., In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984); In re Mercedes Slacks, Ltd., 213 USPQ 397 n.2 (TTAB 1982). See also 37 C.F.R § 2.145(a)(1).