Patent Prosecution Appeals in Translation: Comparing USPTO PTAB Appeals and JPO Appeals Against Examiner Refusals

Executive Summary: This article compares the USPTO ex parte appeal process before the PTAB with the JPO appeal against an examiner’s decision of refusal, using each system as a teaching framework for practitioners trained in the other. Its central point is that the two systems are analogous but not interchangeable: a USPTO appeal is triggered by the “twice rejected” rule and proceeds through a record-centered, brief-driven sequence—Notice of Appeal, Appeal Brief, Examiner’s Answer, Reply Brief, optional oral hearing, PTAB decision, rehearing, and judicial review—whereas a JPO appeal is triggered by the examiner’s decision of refusal and is more closely tied to the Written Request for Appeal, possible same-time amendment, examiner reconsideration, panel review, and potential court action. The article uses Ex parte Bar-Tal as a concrete U.S. example to show how the Appeal Brief frames the applicant’s case, the Examiner’s Answer joins issue, the Reply Brief narrows the dispute, and oral argument with demonstratives helps the PTAB focus on preserved, claim-centered arguments. For Japanese practitioners, the article emphasizes that the U.S. Notice of Appeal is not the merits document and that the Appeal Brief is central; for U.S. practitioners, it emphasizes that the JPO appeal is not a PTAB-style brief-answer-reply proceeding and that amendment strategy at the time of appeal can be procedurally decisive. The practical lesson is “translation without over-assimilation”: each system becomes understandable by reference to the other, but only if counsel deliberately identifies where the analogy breaks down

I.               Introduction

Cross-border patent prosecution often fails not because counsel misunderstands

patentability law, but because counsel imports the wrong procedural instincts. A Japanese patent attorney approaching the United States Patent and Trademark Office (“USPTO”) may look for the U.S. equivalent of the Japan Patent Office (“JPO”) decision of refusal. A U.S. patent attorney approaching the JPO may look for the Japanese equivalent of a USPTO final rejection and a brief-driven appeal to the Patent Trial and Appeal Board (“PTAB”). Each instinct is useful, but only if treated as an analogy rather than an identity.

This article compares the USPTO ex parte appeal process with the JPO appeal against an examiner’s decision of refusal. The purpose is reciprocal. For Japanese practitioners, the article teaches the USPTO appeal process by mapping it onto the JPO refusal-appeal process. For U.S. practitioners, it teaches the JPO appeal process by mapping it onto the familiar USPTO/PTAB appeal sequence.

The scope is limited to administrative appeals during patent prosecution. On the U.S. side, that means ex parte appeals from adverse examiner decisions in patent applications, reissue applications, and ex parte reexamination proceedings before the PTAB. See 35 U.S.C. §§ 6(b), 134; 37 C.F.R. pt. 41, subpt. B. On the Japanese side, that means appeals against an examiner’s decision of refusal under the Japanese Patent Act. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 121(1) (Japan). This article does not address U.S. inter partes review, post-grant review, derivation proceedings, Japanese invalidation trials, Japanese correction trials, patent oppositions, or infringement appeals.

II.            The Basic Translation Problem

The simplest comparison is this: a USPTO ex parte appeal is the U.S. administrative mechanism for asking a specialized patent appeal tribunal to review an examiner’s rejection, while a JPO appeal against refusal is the Japanese administrative mechanism for asking the JPO to review an examiner’s final decision refusing the application.

That comparison is accurate but incomplete. The USPTO system is not triggered by a document called a “decision of refusal.” It is triggered when at least one claim has been twice rejected, and the applicant starts the appeal by filing a Notice of Appeal. See 35 U.S.C. § 134(a); 37 C.F.R. § 41.31(a)(1). The JPO system, by contrast, is triggered by service of the examiner’s decision of refusal, and the applicant initiates the appeal by filing a written request for appeal within the statutory period. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, arts. 121(1), 131(1) (Japan).

For a Japanese attorney, the first lesson is that a U.S. “final rejection” is not the same procedural object as a JPO “decision of refusal.” A U.S. rejection may be “final” in the prosecution-management sense, but appeal eligibility depends on the “twice rejected” rule. See 35 U.S.C. § 134(a); 37 C.F.R. § 41.31(a)(1). For a U.S. attorney, the first lesson is that a JPO decision of refusal is not merely another Office Action. It starts the formal window for filing a JPO appeal against refusal. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 121(1) (Japan).

III.         A Procedural Map

The two systems can be translated as follows:

Stage	USPTO / PTAB	JPO
Trigger	Any claim has been twice rejected; often practically after final rejection	Examiner’s decision of refusal
Initial appeal filing	Notice of Appeal	Written Request for Appeal
Principal advocacy paper	Appeal Brief	Grounds stated in the Written Request for Appeal and related appeal submissions
Examiner second look	Pre-Appeal Brief Review, appeal conference, possible reopening or allowance	Examiner reconsideration when an amendment is filed with the appeal request
Appeal body	PTAB panel	JPO panel of administrative judges
Default mode	Written appellate record; optional oral hearing	Written proceeding; oral proceeding possible but not default for refusal appeals
Decision	Affirm, reverse, affirm-in-part, remand, new ground	Grant, maintain refusal/dismiss appeal, issue new reasons, or order further examination
Court review	Federal Circuit appeal or § 145 civil action	Action to rescind appeal decision before the Tokyo High Court / IP High Court practice

This table should not be read as a one-to-one equivalence chart. The Notice of Appeal is not the same as the JPO Written Request for Appeal. The U.S. Appeal Brief has no exact Japanese twin. The JPO amendment-and-reconsideration mechanism has no exact U.S. twin. The utility of the comparison is pedagogical: each feature becomes easier to understand when introduced through the closest familiar structure and then corrected where the systems diverge.

IV.         When the Applicant Can Appeal

In Japan, the applicant generally moves to the appeal stage after receiving the examiner’s decision of refusal. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 121(1) (Japan). In the United States, the applicant does not wait for a document with that legal character. A patent applicant may appeal to the PTAB once any claim has been twice rejected. See 35 U.S.C. § 134(a); 37 C.F.R. § 41.31(a)(1).

The Japanese practitioner should therefore translate the U.S. trigger this way: the U.S. system permits appeal once prosecution has reached a sufficiently mature rejection posture, measured by repeated rejection of a claim, rather than by service of a single final refusal decision. In practice, many U.S. appeals follow a final Office Action, but the statutory and regulatory test is “twice rejected,” not “final rejection.” See 35 U.S.C. § 134(a); 37 C.F.R. § 41.31(a)(1).

For the U.S. practitioner, the Japanese trigger should be understood differently. The JPO decision of refusal is not an Advisory Action, not a final Office Action, and not the start of an RCE-like period. It is the act that creates the statutory right to file an appeal against refusal. The Japanese Patent Act provides that a person dissatisfied with an examiner’s decision refusing the application may file an appeal within three months after the certified copy of the examiner’s decision is served. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 121(1) (Japan). The JPO’s English FAQ states the practical filing period as three months, or four months for overseas residents, from transmission of the certified copy of the examiner’s decision of refusal. See Japan Patent Office, Patent FAQ 6-14.

That timing difference matters. A U.S. attorney accustomed to treating final rejection as a platform for continued prosecution must treat the Japanese refusal decision as a more formal procedural break. After the decision of refusal, the path to continue contesting the examiner’s position is ordinarily the JPO appeal against refusal, not a routine further response to the examiner.

V.            Starting the Appeal: Notice of Appeal Versus Written Request for Appeal

The USPTO appeal begins with a Notice of Appeal. See 37 C.F.R. § 41.31(a). The Notice is important because it invokes appeal procedure, but it is not the applicant’s principal merits presentation. The applicant must file an Appeal Brief within two months from the date of filing the Notice of Appeal. See 37 C.F.R. § 41.37(a). Failure to file the brief within the required period causes the appeal to stand dismissed. See id. § 41.37(b).

This distinction is critical for Japanese counsel supervising U.S. counsel. The U.S. Notice of Appeal should not be treated as the document in which the appeal is won. The Appeal Brief is the central advocacy document. It identifies the appealed rejections, frames the issues, explains why the examiner erred, and preserves arguments for PTAB review. The appeal is presumed to be taken from the rejection of all claims under rejection unless claims are canceled by an amendment entered by the Office. See 37 C.F.R. §§ 41.31(c), 41.37(c)(1)(iv).

The JPO appeal begins differently. The applicant files a written request for appeal with the Commissioner of the JPO. That request must identify the party and agent, indicate the trial or appeal case, and state the object and grounds of the request. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 131(1) (Japan). In practical teaching terms, the U.S. attorney should not look for a Japanese equivalent of “Notice first, brief later.” The Japanese Written Request for Appeal is more central than the U.S. Notice of Appeal because it is the formal request that states the grounds for challenging the refusal.

For U.S. practitioners, the point is this: in the JPO, the initiating paper and the merits posture are more tightly connected. For Japanese practitioners, the reverse is true in the USPTO: filing the Notice of Appeal only starts the appeal track; the later Appeal Brief does the heavy argumentative work.

VI.         The Examiner’s Second Look

The USPTO has several mechanisms by which the examiner side may reconsider the rejection before the case reaches a PTAB decision. The first is the Pre-Appeal Brief Review Request, a pilot procedure that may be filed with the Notice of Appeal and before the Appeal Brief. See MPEP § 1204.02. The request must be concise, is limited to five pages excluding the form, and cannot be accompanied by an after-final amendment. See id. The panel may determine that the application remains under appeal, reopen prosecution, allow the application, or dismiss the request as non-compliant. See id.

After the Appeal Brief, the examiner considers the issues on appeal. An Examiner’s Answer may incorporate maintained grounds of rejection, withdraw grounds, or include a new ground of rejection with the required approval. See 37 C.F.R. § 41.39(a). If the Examiner’s Answer contains a designated new ground of rejection, the appellant must either reopen prosecution or maintain the appeal by filing a Reply Brief addressing the new ground. See id. § 41.39(b).

The Japanese attorney should view these procedures as a USPTO “second look” before PTAB merits review. But they should not be confused with JPO reconsideration upon amendment. A Pre-Appeal Brief Review Request is highly constrained and argument-focused. The Examiner’s Answer is part of the U.S. appeal sequence. Neither is a general opportunity to re-prosecute the application through new amendments and evidence.

The JPO has a different kind of second look. Under the Japanese Patent Act, the applicant may amend the description, claims, or drawings when filing an appeal against refusal. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 17-2(1)(iv) (Japan). If an appeal is filed and, at the same time, such an amendment is made, the Commissioner of the JPO must have an examiner examine the filing. See id. art. 162. If the examiner determines that a patent should be granted, the examiner rescinds the decision of refusal. See id. art. 164(1). If the examiner does not grant, the examiner reports the examination results to the Commissioner without deciding the appeal. See id. art. 164(3).

This is the point at which U.S. attorneys most often need to recalibrate. In the United States, an appeal normally moves from Notice of Appeal to Appeal Brief to Examiner’s Answer to PTAB review, with amendments after appeal tightly constrained and often outside the appeal record unless entered. See 37 C.F.R. §§ 41.30, 41.33, 41.37. In Japan, by contrast, the amendment filed at the same time as the appeal request can trigger a structured examiner reconsideration before the appeal panel proceeds. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, arts. 17-2(1)(iv), 162–64 (Japan).

VII.       The Appeal Record and the Role of Amendments

The USPTO appeal is record-centered. The rules define the appeal “Record” to include items in the official file wrapper, but exclude amendments, evidence, and documents that were not entered. See 37 C.F.R. § 41.30. Amendments filed after the date of filing an appeal and before the Appeal Brief may be admitted under the rules governing after-final practice, but amendments filed on or after the Appeal Brief are generally limited to canceling claims or rewriting dependent claims into independent form. See id. § 41.33(a)–(c).

The Appeal Brief itself may not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See 37 C.F.R. § 41.37(c)(2). Review of an examiner’s refusal to admit an amendment or evidence is by petition to the Director, not by ordinary Board review of patentability. See id.

The Japanese system also has amendment constraints, but the procedural pressure point is different. Japanese law expressly permits amendment at the same time as filing an appeal against refusal. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 17-2(1)(iv) (Japan). That same-time amendment can determine whether the file receives examiner reconsideration under Article 162 before the appeal panel proceeds. See id. arts. 162–64.

The comparative lesson is straightforward. In the USPTO, counsel should perfect the claim set and evidence posture before relying on PTAB appeal. In the JPO, counsel must make a deliberate decision at the appeal-request stage whether an amendment should accompany the request, because that decision can affect the procedural route of the appeal.

VIII.    Who Decides the Appeal?

In the United States, ex parte appeals are decided by the PTAB. The PTAB’s statutory duties include reviewing adverse examiner decisions on written appeal by applicants under § 134(a), and each appeal must be heard by at least three PTAB members. See 35 U.S.C. § 6(b), (c).

In Japan, a trial or appeal is conducted by a panel of either three or five administrative judges, and the panel reaches its decision by majority vote. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 136(1)–(2) (Japan). The Commissioner of the JPO designates the administrative judges for each case. See id. art. 137(1).

The analogy is helpful but not perfect. A Japanese practitioner can think of PTAB administrative patent judges as performing a role roughly comparable to JPO administrative judges in a refusal appeal: both are specialized patent adjudicators within the patent office structure. A U.S. practitioner can think of the JPO appeal panel as the Japanese administrative counterpart to a PTAB panel. But the JPO process has a somewhat more inquisitorial flavor: grounds not pleaded by a party or intervenor may also be examined in a trial or appeal, although the chief administrative judge must notify the parties and intervenors and give them an opportunity to present opinions. See id. art. 153(1)–(2).

IX.       Briefing, Written Proceedings, and Oral Hearings

The USPTO appeal process is more formally brief-driven than the JPO appeal against refusal. In a U.S. ex parte appeal, the applicant’s merits presentation typically proceeds through a structured sequence: Appeal Brief, Examiner’s Answer, optional Reply Brief, optional Oral Hearing, and then PTAB decision. See 37 C.F.R. §§ 41.37, 41.39, 41.41, 41.47. The regulations require the Appeal Brief within two months after the Notice of Appeal, require specific sections and argument headings, and restrict new amendments and evidence in the brief. 37 C.F.R. § 41.37(a), (c)(1)–(2).

Ex parte Bar-Tal et al., Appeal No. 2026-000860, Application No. 16/952,943, Technology Center 3700, dated June 18, 2026, titled “Intra-Cardiac Pattern Matching,” provides a useful concrete example. In that appeal, the applicant filed an Appeal Brief in U.S. Application No. 16/952,943 after a pre-appeal panel decision. The Examiner’s Answer later maintained the § 101 rejection and responded to the applicant’s arguments. The applicant then filed a Reply Brief that expressly responded to the Examiner’s Answer and stated that a request for oral argument under 37 C.F.R. § 41.47 and the required fee accompanied the filing.

For Japanese practitioners, this example is useful because it shows that a USPTO appeal is not one paper filed after refusal, but a staged adversarial written exchange. For U.S. practitioners learning JPO practice, the same example is useful by contrast: the JPO appeal against refusal is not normally structured around a U.S.-style Appeal Brief, Examiner’s Answer, Reply Brief, and optional PTAB oral argument.

A.            The Appeal Brief

The Appeal Brief is the central merits document in a USPTO ex parte appeal. After filing the Notice of Appeal, the appellant must file the Appeal Brief within two months. 37 C.F.R. § 41.37(a). If the brief is not timely filed, the appeal stands dismissed. Id. § 41.37(b). The required contents include the real party in interest, related appeals or proceedings, a summary of the claimed subject matter, the appellant’s arguments for each contested ground of rejection, and a claims appendix. Id. § 41.37(c)(1)(i)–(v). Arguments not included in the Appeal Brief generally will not be considered by the Board except as permitted for the Reply Brief, oral hearing, or rehearing. Id. § 41.37(c)(1)(iv).

The Bar-Tal Appeal Brief illustrates this structure well. It identifies the application, filing date, invention title, art unit, examiner, docket number, and date of filing; it also notes that the Appeal Brief was filed in response to a Notice of Panel Decision from Pre-Appeal Brief Review. Its table of contents follows the expected PTAB format: real party in interest, related appeals, status of the claims, summary of claimed subject matter, grounds of rejection, argument, conclusion, and claims appendix. The brief then identifies Biosense Webster (Israel) Ltd. as the real party in interest, states that claims 1–20 and 22–24 are on appeal from the Final Office Action, and summarizes the claimed subject matter as electrophysiology mapping and arrhythmia detection using intracardiac electrogram signals acquired by a multi-electrode catheter.

The substantive strategy of the Bar-Tal Appeal Brief is also pedagogically useful. The only rejection identified for appeal was a § 101 rejection asserting that claims 1–20 and 22–24 were directed to a judicial exception without significantly more. The applicant did not merely argue that the claims were “patent eligible” in general terms. Instead, the brief built a technical narrative: the claims recited a concrete intracardiac mapping system and a rule-bound control sequence for processing multi-electrode intracardiac EGMs, including a heartbeat-length window of interest, a pattern of interest, median-filter activity signals, activity thresholds, multi-channel template construction, maximum-slope-based channel weights, weighted correlations, and threshold-based arrhythmia detection.

T

his is a useful teaching point for Japanese patent attorneys. In a JPO appeal against refusal, the written request for appeal and any amendment strategy may carry the advocacy burden at the outset. In a USPTO PTAB appeal, by contrast, the Notice of Appeal is not the merits document. The Appeal Brief is where the applicant must define the appealed issues, preserve each argument, and tell the Board why the examiner erred as to each rejection. The Bar-Tal Appeal Brief does this by converting the claimed invention into a claim-centered technical story and then tying that story to § 101 precedent such as CardioNet, McRO, Thales, Diehr, and Berkheimer. See, e.g., CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); Diamond v. Diehr, 450 U.S. 175 (1981); Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).

For U.S. practitioners learning JPO practice, the contrast is equally important. The Bar-Tal Appeal Brief looks like a conventional U.S. appellate advocacy document: issue identification, claim summary, legal standard, argument headings, and claims appendix. A JPO appeal request may contain grounds of appeal, but it is not simply a Japanese version of a PTAB Appeal Brief. The JPO process places more procedural emphasis on the statutory appeal request after the examiner’s decision of refusal and, where applicable, on amendment at the time of appeal.

B.             The Examiner’s Answer

The Examiner’s Answer is the examiner’s formal appellate response to the Appeal Brief. Under 37 C.F.R. § 41.39, the Examiner’s Answer is deemed to incorporate all grounds of rejection from the Office Action from which the appeal was taken, unless a ground is expressly withdrawn. 37 C.F.R. § 41.39(a)(1). The Answer may also include a new ground of rejection, but any rejection relying on evidence not previously relied upon must be designated as a new ground and requires approval. Id. § 41.39(a)(2). If a new ground is designated, the appellant must either reopen prosecution or maintain the appeal by filing a Reply Brief addressing the new ground. Id. § 41.39(b)(1)–(2).

The Bar-Tal Examiner’s Answer shows this function in practice. It begins by identifying the application, the appellant, the filing date, and the fact that the Answer responds to the Appeal Brief. It then states that every ground of rejection from the April 1, 2025 Office Action is being maintained except any grounds listed as withdrawn, and that any new grounds would be provided under a separate “New Grounds of Rejection” heading. The Answer then responds to the applicant’s § 101 arguments by maintaining that catheter-based signal acquisition is pre-solution data gathering, that the post-acquisition processing steps amount to the abstract idea itself, and that detecting cardiac arrhythmia is part of the abstract idea.

This example is useful because it shows that the Examiner’s Answer is not merely another Office Action. It is a responsive appellate paper. The examiner does not simply repeat the final rejection in full; the Answer joins issue with the Appeal Brief. In Bar-Tal, the Appeal Brief framed the claims as a concrete, device-embedded electrophysiology signal-processing pipeline. The Examiner’s Answer responded by reframing the claims as data gathering plus abstract processing. That reframing became the central dispute for the Reply Brief and, presumably, for oral argument.

The Answer also demonstrates why the post-Answer stage matters procedurally. The final page of the Bar-Tal Examiner’s Answer includes the examiner’s signature, identifies conferees, and warns that the appeal forwarding fee must be paid within the period permitted by 37 C.F.R. § 41.45 to avoid dismissal. This tracks the rule: after an Examiner’s Answer, the appellant must pay the appeal forwarding fee within the later of two months from the Answer or a decision refusing to designate a new ground of rejection; failure to pay causes dismissal. 37 C.F.R. § 41.45(a)–(b).

For Japanese attorneys, the Examiner’s Answer should be taught as the examiner’s appellate defense of the rejection before the case reaches the Board. It is not equivalent to JPO reconsideration by examiners before appeal proceedings. JPO reconsideration is tied to amendment at the time of filing the appeal request; the U.S. Examiner’s Answer is a formal response to the Appeal Brief. For U.S. attorneys learning JPO practice, this distinction cuts the other way: do not expect the JPO refusal appeal to include a U.S.-style Examiner’s Answer as a standard responsive brief.

C.            The Reply Brief

The Reply Brief is the appellant’s opportunity to respond to the Examiner’s Answer. It is available as of right, but only one Reply Brief may be filed. 37 C.F.R. § 41.41(a). The Reply Brief must be filed within the later of two months from the Examiner’s Answer or a decision refusing to grant a petition to designate a new ground of rejection. Id. The Reply Brief may not include new or non-admitted amendments, new or non-admitted affidavits, or other new evidence. Id. § 41.41(b)(1). Arguments raised for the first time in the Reply Brief generally will not be considered unless they were raised in the Appeal Brief, are responsive to the Examiner’s Answer, or good cause is shown. Id. § 41.41(b)(2).

The Bar-Tal Reply Brief shows the correct procedural posture. It states that it timely responds to the Examiner’s Answer of November 24, 2025, and it further states that a request for oral argument under 37 C.F.R. § 41.47 and the required fee accompany the Reply Brief. The Reply Brief repeats the status of the claims and the § 101 ground of rejection, but it does not try to become a second Appeal Brief. It expressly says that it provides arguments “specific and responsive to the Examiner’s Answer” and that the Appeal Brief arguments are maintained.

Substantively, the Bar-Tal Reply Brief is a strong example of what a Reply Brief should do: identify the Examiner’s Answer’s framing error and respond directly to it. The Reply Brief argues that the Examiner’s Answer maintained the § 101 rejection by characterizing catheter acquisition as pre-solution data gathering and by treating the post-acquisition processing steps as “the abstract idea itself.” It then responds that this analysis rests on a level-of-abstraction error because the claims recite a specific intracardiac electrogram processing technique, including beat-bounded windowing, annotation-anchored activity determination, threshold-bounded POI delineation, multichannel template construction, and morphology-based weighting of correlation scores.

Notably, the Reply Brief does not merely say, “The Examiner is wrong for the reasons stated in the Appeal Brief.” Instead, it takes the Examiner’s Answer on its own terms. It identifies the Answer’s core characterization—pre-solution data gathering plus abstract idea—and then argues that the characterization collapses the Step 2A inquiry into a tautology. It also responds to the Answer’s “post-solution” treatment of claims 15 and 16 by arguing that the display and map limitations are functional constraints on mapping output conditioned on the computed correlation state.

For Japanese practitioners, the Reply Brief should be taught as a limited, responsive paper. It is not the place to introduce a new appeal theory that should have been in the Appeal Brief. It is the place to answer the examiner’s appellate framing. For U.S. practitioners learning JPO practice, the comparison is limited: a JPO refusal appeal may involve written opportunities to respond to newly raised reasons, but it does not ordinarily follow the USPTO’s formal Appeal Brief → Examiner’s Answer → Reply Brief sequence.

D.            Oral Argument / Oral Hearing

Oral hearing before the PTAB is optional. The governing rule provides that an oral hearing should be requested only when the appellant considers it “necessary or desirable” for proper presentation of the appeal, and an appeal decided on the briefs receives the same consideration as an appeal decided after oral hearing. 37 C.F.R. § 41.47(a). If the appellant wants an oral hearing, the appellant must file a separate paper captioned “REQUEST FOR ORAL HEARING,” with the required fee, within two months from the Examiner’s Answer or on the date of filing the Reply Brief, whichever is earlier. Id. § 41.47(b). If no timely request and fee are filed, the appeal is assigned for decision on the briefs. Id. § 41.47(c).

The Bar-Tal Reply Brief illustrates this timing. It states that the Reply Brief timely responds to the Examiner’s Answer of November 24, 2025, and that a request for oral argument under 37 C.F.R. § 41.47 and the required fee accompanied the Reply Brief. The public recording is identified as the PTAB oral argument recording for Ex parte Bar-Tal et al., Appeal No. 2026-000860, Application No. 16/952,943, Technology Center 3700, dated June 18, 2026. For Japanese practitioners, this is an important procedural point: PTAB oral argument is not part of the Notice of Appeal or the Appeal Brief. It is a separate, later advocacy event that occurs only after the written appeal issues have crystallized.

The PTAB oral hearing is not an evidentiary hearing. Unless otherwise ordered, oral argument is ordinarily limited to twenty minutes for the appellant and fifteen minutes for the primary examiner. 37 C.F.R. § 41.47(d). The appellant argues first and may reserve rebuttal time. Id. § 41.47(e)(1). At the hearing, the appellant may rely only on evidence previously entered and considered by the examiner and may present only arguments relied upon in the Appeal Brief or Reply Brief, except for a new argument based on a recent relevant Board or federal-court decision upon a showing of good cause. Id. § 41.47(e)(1)–(2).

The Bar-Tal oral advocacy is useful because it shows how PTAB oral argument differs from simply re-reading the briefs. The presentation is structured around a compact theme: the claims are not directed to the result “detect arrhythmia,” but to a claimed “how”—a constrained, catheter-based intracardiac EGM processing pipeline. That theme tracks the Appeal Brief, which framed the claims as a concrete intracardiac configuration and rule-bound control sequence, and the Reply Brief, which argued that the Examiner’s Answer committed a level-of-abstraction error by defining the claim at the result level and then treating the claimed technical mechanism as the abstract idea itself.

The recording also illustrates a key feature of effective PTAB advocacy: counsel uses oral argument to simplify, not expand, the appeal. The oral presentation focuses the panel on the dispositive tension between the Examiner’s framing and the Appellant’s framing. The Examiner’s Answer treated catheter acquisition as pre-solution data gathering, the post-acquisition processing steps as the abstract idea itself, and the display/map limitations as post-solution activity. The Appellant’s oral presentation, consistent with the Reply Brief and demonstratives, redirects the inquiry to the claim language: catheter channels feed the claimed template, correlations, maximum-slope channel weights, weighted score, thresholded detection, and map incorporation.

Demonstratives fit within that same record-bound framework. They are advocacy aids, not evidence. The PTAB Oral Hearing Guide states that demonstrative exhibits are neither required nor expected, but may be used to assist the presentation; if used, they must be submitted at least ten days before the hearing, must not include information not previously made of record, and must be marked “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE.” The Guide also states that demonstratives used at oral hearing are aids and not evidence and cannot be used to advance arguments or introduce evidence not previously presented in the record.

Substantively, the Bar-Tal demonstratives show how the oral advocate translated a dense § 101 record into a few visual propositions. One slide contrasts the Examiner’s framing with the Appellant’s framing: catheter acquisition as pre-solution data gathering versus catheter channels as the front end of the electrophysiology workflow; post-acquisition processing as the abstract idea versus the ordered pipeline as the claimed technical mechanism; and display/map limitations as post-solution activity versus claim 16 as a constraint on map incorporation. Another slide reduces claim 1 to a four-part pipeline: acquiring catheter IC EGM channels, segmenting the heartbeat through the WOI/activity-threshold/POI sequence, forming and matching a multichannel template using maximum-slope channel weights, and generating a weighted correlation score for thresholded detection.

The oral advocacy shown in the recording is effective because it uses those demonstratives as signposts rather than as a script. The advocate’s task is not to cover every argument in the Appeal Brief. It is to help the panel decide the core characterization question: are the claims merely an abstract instruction to detect arrhythmia, or do they recite a specific, device-embedded intracardiac signal-processing technique? The Bar-Tal presentation keeps returning to that question, using the claim pipeline, the Examiner’s Answer, and the Reply Brief’s level-of-abstraction argument as the organizing structure.

The claim 16 demonstrative provides a good example of oral advocacy aimed at a dependent claim. The Examiner’s Answer characterized claims 15 and 16 as merely displaying a result. The demonstrative responds visually with a threshold gate: only electrical activity having a correlation score exceeding the threshold is incorporated into the heart map, and areas exhibiting arrhythmia are emphasized. That visual does not add new evidence; it illustrates the Reply Brief’s written point that claim 16 imposes functional constraints on the mapping output, rather than merely appending a generic display step.

The teaching point is that PTAB oral argument is a short, claim-centered, record-bound presentation. In Bar-Tal, the written sequence created the dispute: the Appeal Brief framed the invention as a specific technical pipeline; the Examiner’s Answer reframed the pipeline as abstract processing following data gathering; and the Reply Brief attacked that framing as a level-of-abstraction error. The oral argument then gave counsel an opportunity to make that dispute easy for the panel to see. For Japanese practitioners, this illustrates the appellate character of PTAB oral argument. For U.S. practitioners learning JPO practice, the comparison is useful mainly by contrast: a JPO appeal against refusal is generally more documentary in ordinary posture and does not map neatly onto the U.S. sequence of Appeal Brief, Examiner’s Answer, Reply Brief, oral hearing request, and demonstratives.

X.            Decisions and Immediate Consequences

The PTAB may affirm or reverse the examiner’s decision in whole or in part on the grounds and claims specified by the examiner, and it may remand an application to the examiner. See 37 C.F.R. § 41.50(a)(1). After a Board decision, jurisdiction passes back to the examiner, subject to the appellant’s right of appeal or other review, for further action needed to carry out the decision. See id. § 41.54.

A U.S. reversal should not be oversold to Japanese clients as automatic issuance. A reversal is a Board decision that the examiner’s appealed rejection has not been sustained; procedurally, the case still returns to the examiner for action consistent with the Board decision. See 37 C.F.R. § 41.54.

In Japan, an appeal decision must be in writing and state the appeal number, party and agent information, identification of the case, the conclusion and reasons, and the date of the decision. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 157(2) (Japan). If the JPO appeal board cancels the examiner’s decision of refusal, the JPO states that a decision to grant a patent will be transmitted, and the patent right may then be obtained after payment of the required patent fees within the prescribed period. See Japan Patent Office, Patent FAQ 6-14.

The JPO system also has a remand-like possibility. If the examiner’s decision is rescinded in an appeal against refusal, an appeal decision ordering further examination may be issued, and the determination in that appeal decision is binding on the examiner with respect to the case. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 160(1)–(2) (Japan).

XI.         Rehearing and Administrative Reconsideration After Decision

The USPTO has an express PTAB rehearing mechanism. An appellant may file a single request for rehearing within two months of the original Board decision. See 37 C.F.R. § 41.52(a)(1). The request must state with particularity the points believed to have been misapprehended or overlooked by the Board, and arguments not previously raised or evidence not previously relied on generally are not permitted except in limited circumstances specified by rule. See id.

The JPO refusal-appeal structure should not be taught to U.S. attorneys as having a routine PTAB-style rehearing step after an adverse appeal decision. The ordinary next comparison point is judicial review of the JPO appeal decision. Japanese law provides for actions against trial or appeal decisions, with exclusive jurisdiction in the Tokyo High Court and a thirty-day period running from service of the certified copy of the decision. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 178(1), (3) (Japan).

That difference affects how the record should be built. A U.S. practitioner may think in terms of preserving issues for PTAB rehearing and then Federal Circuit or § 145 review. A Japanese practitioner may think in terms of building an appeal record that can support a later action to rescind the JPO appeal decision.

XII.       Judicial Review

After a final PTAB decision in an ex parte application appeal, a dissatisfied applicant may appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. § 141 or, if no Federal Circuit appeal has been taken, may bring a civil action against the Director under 35 U.S.C. § 145 in the U.S. District Court for the Eastern District of Virginia. See 35 U.S.C. §§ 141(a), 145. Filing a Federal Circuit appeal waives the right to proceed under § 145. See id. § 141(a). The deadline for a § 141 appeal or § 145 civil action is generally sixty-three days after the final Board decision, or sixty-three days after the decision on rehearing if a timely rehearing request was filed. See 37 C.F.R. § 90.3(a), (b)(1).

The JPO route is different. Japanese law provides that the Tokyo High Court has exclusive jurisdiction over actions against trial or appeal decisions, and such an action may not be instituted after thirty days have passed from service of the certified copy of the decision. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, art. 178(1), (3) (Japan). In an action against a JPO appeal decision in a refusal case, the Commissioner of the JPO is generally the proper defendant. See id. art. 179.

If the Japanese court finds grounds for the request, it rescinds the JPO decision; once the rescission judgment becomes final and binding, the administrative judges must carry out further proceedings and issue a decision. See id. art. 181(1)–(2). This resembles a remand in functional terms, but it should not be described as identical to U.S. appellate remand practice. The Japanese statute expressly directs further JPO proceedings after judicial rescission.

XIII.    Practical Teaching Framework

For Japanese practitioners, the USPTO ex parte appeal is best understood as an administrative appeal from examiner rejection to a specialized patent board, but with a distinctive U.S. sequence: Notice of Appeal, Appeal Brief, Examiner’s Answer, possible Reply Brief, optional oral hearing, PTAB decision, possible rehearing, and possible judicial review. See 35 U.S.C. §§ 6, 134; 37 C.F.R. §§ 41.31, 41.37, 41.39, 41.41, 41.47, 41.50, 41.52.

For U.S. practitioners, the JPO appeal against refusal is best understood as an administrative appeal from a final refusal decision to a JPO appeal panel, but with a distinctive Japanese sequence: decision of refusal, written request for appeal, potential same-time amendment, possible examiner reconsideration, appeal-panel written proceedings, possible notice of new reasons, appeal decision, and possible action to rescind the appeal decision before the court. See Tokkyo Hō [Patent Act], Act No. 121 of 1959, arts. 121, 131, 136, 145, 159, 162–64, 178–81 (Japan).

XIV.    Conclusion

The USPTO and JPO appeal systems are best understood as homologous, not identical. Both are administrative patent-office mechanisms for challenging examiner refusals or rejections before specialized patent decisionmakers. Both are primarily written. Both provide mechanisms for dealing with new grounds or reasons. Both preserve a path to judicial review.

But the differences are practice-defining. The USPTO appeal is brief-driven and record-centered: the Notice of Appeal starts the process, but the Appeal Brief frames the case for PTAB review. The JPO refusal appeal is request-and-amendment sensitive: the decision of refusal creates the statutory appeal window, and an amendment filed with the appeal request can trigger examiner reconsideration before appeal-panel decision.

For cross-border counsel, the central discipline is translation without over-assimilation. A Japanese attorney should not treat U.S. PTAB appeals as a renamed JPO refusal appeal. A U.S. attorney should not treat JPO refusal appeals as a renamed PTAB appeal. Each process becomes intuitive only when the familiar system is used as a map—and then deliberately corrected where the map stops matching the terrain.