Two ex parte appeals decided at the Patent Trial and Appeal Board on 22 October 2026 were resolved not on the prior art the examiner relied on, but on claim-reading doctrines the panel introduced itself. Patently-O‘s Dennis Crouch, reporting both the same day, draws the thread between them: each turned on a ground the Board raised on its own motion, and the Board designated its move a new ground of rejection in one case and not in the other.
In Ex parte Lowder, Appeal No. 2026-001025, the Board reversed the obviousness rejections of a cannabidiol formulation — but, according to Patently-O, only pro forma, because it simultaneously entered its own rejection holding the claims indefinite. The defect it identified is narrow and entirely ordinary: one recited ingredient, Labrafil M2125 CS, can function either as an oily solvent or as a surfactant, and the claim identifies that ingredient by its chemistry and its weight percentage while never saying which role it is there to play. In Ex parte Gross, Appeal No. 2026-002355 — Apple’s second appeal in the same application — the Board affirmed the obviousness rejections of all fifteen claims. For dependent claim 11 it did not rest on the examiner’s prior-art finding at all: it held that the added limitation, an instruction from the user that the call “should be analyzed”, is printed matter entitled to no patentable weight. The claims at issue cover a phone that detects a place named during a call and then opens a map application populated with that location.
Why the designation, not the doctrine, is the deadline
The procedural consequence is set out in 37 CFR 41.50, and it is sharper than most prosecution calendars assume. Under 41.50(b), where the Board has knowledge of a ground not involved in the appeal and designates its statement a new ground of rejection, that decision is not final for judicial review, and the appellant must, within two months of the date of the decision, choose one of exactly two options or the appeal terminates as to the rejected claims. The first is to reopen prosecution — submit an amendment of the rejected claims or new evidence, or both, and the matter is remanded to the examiner, where the new ground binds the examiner unless the amendment or evidence not previously of record overcomes it. The second is to request rehearing under 41.52 on the same record, addressing the new ground and stating with particularity what the Board misapprehended or overlooked.
The second case is the one that quietly costs clients claims. Where a panel decides a claim on a doctrine the examiner never applied and does not label it a new ground, 41.50(c) provides that any request to review that failure to designate must be raised by a request for rehearing under 41.52 — and that failure to file such a request timely constitutes a waiver of any argument that the decision contains an undesignated new ground. Rule 41.52 then limits the remedy further: a single request for rehearing, within two months of the original decision, with arguments not previously raised generally excluded except for the carve-outs in 41.52(a)(2) to (a)(4) — one of which, (a)(4), exists precisely to permit new arguments that the decision contains an undesignated new ground. Both clocks share one more feature worth docketing in capitals: 41.50(f) and 41.52(b) both state that extensions of time under § 1.136(a) do not apply to these periods. The automatic extension that prosecution reflexes reach for is unavailable; only 1.136(b) relief, which must be justified, is left.
What to do differently
First, treat a Board decision as a dated trigger, not an outcome to read at leisure. An appeal that comes back marked “reversed” — as the obviousness rejections in Lowder were — can still carry a live, binding rejection and a two-month unextendable fuse. Any docketing rule that keys off the disposition rather than the decision date will miss it. That is the practical case for docketing appeal decisions with the same discipline applied to office actions, which is how our patent docketing practice treats them: date of decision in, both 41.50(b) options and the 41.52 rehearing window out, no 1.136(a) extension assumed.
Second, read the decision for doctrines the examiner never raised, whether or not the panel flagged them. The waiver in 41.50(c) runs on a clock that does not care that the new reasoning was unlabelled; if a dependent claim was disposed of on printed matter, enablement or indefiniteness that appears nowhere in the final rejection or the answer, the rehearing request is the only route to say so, and silence forfeits the point for good.
Third, the drafting lessons are specific and cheap to act on. In formulation claims, a commercial excipient named by trade designation and weight percentage is an indefiniteness target whenever that same material is a recognised solvent and a recognised surfactant — more so where the claim separately recites solvent and surfactant components, inviting the question of which bucket the ingredient fills. Recite the function expressly, or claim by function and park the named material in a dependent claim, and make sure the specification supports whichever reading you intend. On the software side, a limitation whose substance is the content of an instruction or a message — what the user tells the device, what a label says — is exposed to being given no patentable weight at all, which means a dependent claim added only to carry it contributes nothing to the obviousness analysis. Claim the structural or functional consequence instead: what the device does differently because the instruction arrived, not the instruction itself.
Fourth, if the route chosen is to reopen prosecution under 41.50(b)(1), remember that the new ground binds the examiner unless overcome by an amendment or evidence not previously of record. Arguing the old record again is not an option on that path, which is why the reopening is usually only worth filing alongside something genuinely new — a declaration, a fresh evidentiary showing, or a reworked claim set informed by a targeted prior-art search that tests where the amended scope actually sits. Choosing rehearing instead keeps the record closed and the issue legal, which is the better fit where, as in the indefiniteness holding in Lowder, the dispute is about how a claim term should be read rather than about what the art teaches.
None of this changes the substantive law of indefiniteness or printed matter. What these two decisions show is how much of an applicant’s remaining room is set by a label applied by the panel, and by two months that begin running the day the decision issues.