Whether MPEP § 1207.04 violates patent applicants' statutory right of appeal following a second rejection

QUESTION PRESENTED Section 134 of the Patent Act provides that an “applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.” Section 6 provides, in turn, that the “Appeal Board shall...on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134.” Interpreting those provisions’ predecessors, U.S. ex rel. Steinmetz v. Allen held that mandamus was the appropriate remedy when the Patent and Trademark Office refused to allow an appeal to proceed to the Appeal Board’s predecessor. 192 U.S. 548 (1904). A century later, the PTO adopted a rule, Manual of Patent Examining Procedure (“MPEP”) § 1207.04, authorizing patent examiners to block an applicant’s appeal from ever reaching the Appeal Board by reopening patent prosecution to enter additional rejections. Accordingly, the question presented is: Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.