Chapter 1200 Appeal

Introduction1201 Composition of Board1202 Administrative Handling1203 Notice of Appeal1204

Reinstatement of Appeal1204.01 Pre-Appeal Brief Review Request andConference Pilot Program

1204.02

Interviews After Notice of Appeal1204.03 Official Record on Appeal1204.04

Appeal Brief1205 Time for Filing Appeal Brief1205.01 Appeal Brief Content1205.02 Non-Compliant Appeal Brief andAmended Brief

1205.03

Amendments and Affidavits or OtherEvidence Filed With or After Appeal

1206

Examiner’s Answer1207 Appeal Conference1207.01 Contents of Examiner’s Answer1207.02 New Ground of Rejection inExaminer’s Answer

1207.03

Determining Whether a Groundof Rejection is New

1207.03(a)

Petition to Designate a NewGround of Rejection and toReopen Prosecution

1207.03(b)

Appellant's Reply to NewGrounds of Rejection

1207.03(c)

Reopening of Prosecution AfterAppeal

1207.04

Substitute Examiner’s Answer1207.05 Reply Briefs and Fee for ForwardingAppeal

1208

Fee for Forwarding an Appeal to theBoard

1208.01

Oral Hearing1209 Actions Subsequent to Examiner’sAnswer but Before Board’s Decision

1210

Remand by Director or Board1211 Remand by Board for FurtherConsideration of Rejection

1211.01

Remand To Consider Amendment1211.02 Remand To Consider Affidavits orDeclarations

1211.03

Remand by Board for Further Search1211.04 Board Requires Appellant to AddressMatter

1212

Decision by Board1213 [Reserved]1213.01 New Grounds of Rejection by Board1213.02

Publication of and Public Access toBoard Decision

1213.03

Procedure Following Decision by Board1214 Procedure Following New Ground ofRejection by Board

1214.01

[Reserved]1214.02 Rehearing1214.03 Examiner Reversed in Whole1214.04 Cancellation of Claims Not Appealed1214.05 Examiner Sustained in Whole or inPart; Claims Require Action

1214.06

Reopening of Prosecution1214.07 Withdrawal or Dismissal of Appeal1215

Withdrawal of Appeal1215.01 Claims Standing Allowed1215.02 Partial Withdrawal1215.03 Dismissal of Appeal1215.04

Judicial Review1216 Appeals to the U.S. Court of Appealsfor the Federal Circuit

1216.01

Civil Suits Under 35 U.S.C. 145 and146

1216.02

1201 Introduction [R-08.2017]

The United States Patent and Trademark Office(Office) in administering the Patent Laws makesmany decisions of a substantive nature which theapplicant may feel deny them the patent protectionto which they are entitled. The differences of opinionon such matters can be justly resolved only byprescribing and following judicial procedures. Wherethe differences of opinion concern the denial ofpatent claims because of prior art or otherpatentability issues, the questions thereby raised aresaid to relate to the merits, and appeal procedurewithin the Office and to the courts has long beenprovided by statute (35 U.S.C. 134).

Throughout this chapter, "Board" is used to refer thePatent Trial and Appeal Board and its predecessororganizations, the Board of Patent Appeals andInterferences and the separate Board of Appeals andBoard of Interferences.

Unless otherwise noted, the discussion of the exparte appeal practice before the Board in this chapteris primarily directed to appeals wherein the noticeof appeal was filed on or after January 23, 2012, orto proceedings commenced on or after September

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16, 2012. See Pub. L. 112-29 (September 16,2011)(known as the Leahy-Smith America InventsAct or the AIA) and final rule “Rules of PracticeBefore the Board of Patent Appeals and Interferencesin Ex Parte Appeals, 76 Fed. Reg. 72270(November 22, 2011).

For information pertaining to the Board’s ex parte appeal practice and procedure in effect prior toSeptember 16, 2012, see Chapter 1200 in the MPEP8th Edition, Rev. 9 (August 2012)(available on theUSPTO web site at www.uspto.gov/web/offices/pac/mpep/old/mpep_E8R9.htm.

The line of demarcation between appealable mattersfor the Board and petitionable matters for theDirector of the U.S. Patent and Trademark Office(Director) should be carefully observed. The Boardwill not ordinarily hear a question that should bedecided by the Director on petition, and the Directorwill not ordinarily entertain a petition where thequestion presented is a matter appealable to theBoard. Ordinarily, an objection is petitionable, anda rejection is appealable, but when the objection is"determinative of the rejection" the matter may beaddressed by the Board. See In re Hengehold, 440F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971)and Ex parte Frye, 94 USPQ2d 1072, 1078 (Bd.Pat. App. & Int. 2010)(precedential). Some matterswhich have been determined to be petitionable andnot appealable include: a requirement for restrictionor election of species, finality, non-entry ofamendments, and holdings of abandonment. As 37CFR 1.181(f) states that any petition not filed within2 months from the action complained of may bedismissed as untimely and since 37 CFR 1.144 statesthat petitions from restriction requirements must befiled no later than appeal, petitionable matters willrarely be present in a case by the time it is beforethe Board for a decision. In re Watkinson, 900 F.2d230, 14 USPQ2d 1407 (Fed. Cir. 1990).

This chapter is primarily directed to ex parte appeals. For appeals in inter partes reexaminationproceedings, see 37 CFR 41.60 to 41.81 and MPEP§§ 2674 to 2683.

1202 Composition of Board [R-08.2017]

35 U.S.C. 6 provides for a Patent Trial and AppealBoard as follows:

35 U.S.C. 6 Patent Trial and Appeal Board.

(a) ESTABLISHMENT AND COMPOSITION.— Thereshall be in the Office a Patent Trial and Appeal Board. TheDirector, the Deputy Director, the Commissioner for Patents,the Commissioner for Trademarks, and the administrative patentjudges shall constitute the Patent Trial and Appeal Board. Theadministrative patent judges shall be persons of competent legalknowledge and scientific ability who are appointed by theSecretary, in consultation with the Director. Any reference inany Federal law, Executive order, rule, regulation, or delegationof authority, or any document of or pertaining to the Board ofPatent Appeals and Interferences is deemed to refer to the PatentTrial and Appeal Board.

(b) DUTIES.— The Patent Trial and Appeal Board shall—

(1) on written appeal of an applicant, review adversedecisions of examiners upon applications for patents pursuantto section 134(a);

(2) review appeals of reexaminations pursuant tosection 134(b);

(3) conduct derivation proceedings pursuant to section135; and

(4) conduct inter partes reviews and post-grant reviewspursuant to chapters 31 and 32.

(c) 3-MEMBER PANELS.— Each appeal, derivationproceeding, post-grant review, and inter partes review shall beheard by at least three members of the Board, who shall bedesignated by the Director. Only the Patent Trial and AppealBoard may grant rehearings.

(d) TREATMENT OF PRIOR APPOINTMENTS.—TheSecretary of Commerce may, in the Secretary’s discretion, deemthe appointment of an administrative patent judge who, beforethe date of the enactment of this subsection, held office pursuantto an appointment by the Director to take effect on the date onwhich the Director initially appointed the administrative patentjudge. It shall be a defense to a challenge to the appointment ofan administrative patent judge on the basis of the judge’s havingbeen originally appointed by the Director that the administrativepatent judge so appointed was acting as a de facto officer.

35 U.S.C. 6 was amended in Pub. L. 112-29, sec. 7.In addition to changing the duties of the Board andclarifying its membership, the name of the Boardwas changed from the Board of Patent Appeals andInterferences (BPAI) to the Patent Trial and AppealBoard (PTAB), effective September 16, 2012.Consistent with 35 U.S.C. 6(a), examiners shouldtreat any reference to the BPAI (or its predecessors,the separate Board of Appeals and Board ofInterferences) as a reference to the PTAB. In acitation to a decision of the Board (e.g., in an Office

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action or Appeal Brief), decisions mailed prior toSeptember 16, 2012 should continue to be cited asdecisions of the BPAI or its predecessororganizations.

As provided by 37 CFR 41.2, “Board” means thePatent Trial and Appeal Board and includes:

(A) For a final Board action:

(1) In an appeal or contested case, a panel ofthe Board;

(2) In a proceeding under 37 CFR 41.3, theChief Administrative Patent Judge or another officialacting under an express delegation from the ChiefAdministrative Patent Judge.

(B) For non-final actions, a Board member oremployee acting with the authority of the Board.

“Board member” means the Under Secretary ofCommerce for Intellectual Property and Director ofthe U.S. Patent and Trademark Office, the DeputyUnder Secretary of Commerce for IntellectualProperty and Deputy Director of the U.S. Patent andTrademark Office, the Commissioner for Patents,the Commissioner for Trademarks, and theadministrative patent judges.

1203 Administrative Handling [R-08.2017]

Ex parte appeals to the Board, and documentsrelating thereto filed prior to a docketing notice fromthe Board, are reviewed to determine the businessunit of the Office responsible for their processing.Appeal documents, such as the notice of appeal,appeal brief, pre-appeal brief request for review (SeeMPEP § 1204.02), and request for extension of timeto file the brief, are processed by the Patent AppealCenter.

The Patent Examining Corps has jurisdiction overthe application to consider the appeal brief, conductan appeal conference, draft an examiner's answer,and decide the entry of amendments, evidence, andinformation disclosure statements filed after final orafter notice of appeal. Jurisdiction over theproceeding passes to the Board upon the filing of areply brief under 37 CFR 41.41 or the expiration ofthe time in which to file such a reply brief, whicheveris earlier. See 37 CFR 41.35.

Notices of appeal, appeal briefs, and reply briefs arereviewed for compliance with the appropriate rulesprior to being forwarded to the examiner. As such,examiners should not identify these documents asdefective or noncompliant for failure to comply withprocedural rules. In the rare situation where asubstantial defect in an appeal document is identifiedafter these reviews, the examiner should contact thePatent Appeal Center to determine whethercorrective action should be taken.

The Patent Appeal Center may return the applicationto the examiner for corrections to the examiner'sanswer or other outgoing documents whenappropriate.

If the brief is not filed within the time designated by37 CFR 41.37, the applicant will be notified that theappeal stands dismissed. See MPEP § 1215.

I. DOCKETING PROCEDURE

The Board’s docketing procedure is designed toprovide notification to the appellant within onemonth of receipt from the Patent Appeals Center ofan appealed application at the Board that (A) theappeal has been received at the Board and docketed,or (B) the appeal is being remanded to the examinerfor attention to unresolved matters.

If the appeal is ready for docketing three events willoccur:

(A) an appeal number will be assigned;

(B) the Board will issue a docketing notice; and

(C) the appeal will be assigned either to a masterdocket for subsequent reassignment to a panel ordirectly to a panel of at least three Board members.

If the appeal cannot be docketed due to mattersrequiring further attention in the patent examiningcorps, the appeal will be remanded to the patentexamining corps with an order indicating why theappeal cannot be docketed. Notification of theremand, in the form of a copy of the order, will bemailed to the appellant.

The docketing notice or order indicating why theappeal cannot be docketed will provide the appellantand the examiner with notification that (A) the

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appeal is under the jurisdiction of the Board; or (B)that the appeal is being returned to the patentexamining corps to resolve matters requiringattention prior to decision of the appeal. Thus, theappellant will know to which organization to lookfor the next communication in the appealedapplication.

II. “SPECIAL CASE”

If the applicant remains diligent, an application forpatent that once has been made special and advancedout of turn by the United States Patent andTrademark Office (Office) for examination willcontinue to be special throughout its entire courseof prosecution in the Office, including appeal, if any,to the Board. See MPEP § 708.01.

A petition to make an application special after thejurisdiction of the appeal has been transferred to theBoard may be addressed to the Board. Thus, no suchpetition will be granted unless the brief has beenfiled and applicant has made the same type ofshowing required by the Director under 37 CFR1.102. Therefore, diligent prosecution is essential toa favorable decision on a petition to make special.

1204 Notice of Appeal [R-08.2017]

35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.

(a) PATENT APPLICANT.— An applicant for a patent,any of whose claims has been twice rejected, may appeal fromthe decision of the primary examiner to the Patent Trial andAppeal Board, having once paid the fee for such appeal.

(b) PATENT OWNER.— A patent owner in areexamination may appeal from the final rejection of any claimby the primary examiner to the Patent Trial and Appeal Board,having once paid the fee for such appeal.

35 U.S.C. 41 Patent fees; patent and trademark searchsystems

(a) GENERAL FEES. — The Director shall charge thefollowing fees:

*****

(6) APPEAL FEES. —

(A) On filing an appeal from the examiner to thePatent Trial and Appeal Board, $540.

(B) In addition, on filing a brief in support of theappeal, $540, and on requesting an oral hearing in the appealbefore the Patent Trial and Appeal Board, $1,080.

An additional fee for forwarding an appeal to theBoard after Examiner's Answer is set at 37 CFR 41.20(b)(4).

*****

37 CFR 41.31 Appeal to Board.

(a) Who may appeal and how to file an appeal An appealis taken to the Board by filing a notice of appeal.

(1) Every applicant, any of whose claims has beentwice rejected, may appeal from the decision of the examinerto the Board by filing a notice of appeal accompanied by thefee set forth in § 41.20(b)(1) within the time period providedunder § 1.134 of this title for reply.

(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November29, 1999, any of whose claims has been twice rejected, mayappeal from the decision of the examiner to the Board by filinga notice of appeal accompanied by the fee set forth in §41.20(b)(1) within the time period provided under § 1.134 ofthis title for reply.

(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or afterNovember 29, 1999, any of whose claims has been finally (§1.113 of this title) rejected, may appeal from the decision of theexaminer to the Board by filing a notice of appeal accompaniedby the fee set forth in § 41.20(b)(1) within the time periodprovided under § 1.134 of this title for reply.

(b) The signature requirements of §§ 1.33 and 11.18(a) ofthis title do not apply to a notice of appeal filed under thissection.

(c) An appeal, when taken, is presumed to be taken fromthe rejection of all claims under rejection unless cancelled byan amendment filed by the applicant and entered by the Office.Questions relating to matters not affecting the merits of theinvention may be required to be settled before an appeal can beconsidered.

(d) The time periods set forth in paragraphs (a)(1) through(a)(3) of this section are extendable under the provisions of §1.136 of this title for patent applications and § 1.550(c) of thistitle for ex parte reexamination proceedings.

I. APPEAL FEES

Public Law 112-29, sec. 10 authorizes the Directorto set or adjust fees “established, authorized, orcharged under title 35.” The fees for appeal as setforth in 35 U.S.C. 41(a)(6) have been adjusted byrule at 37 CFR 41.20(b). See 37 CFR 41.20(b)(1)for the fee for the filing of a notice of appeal, 37CFR 41.20(b)(2)(i) for filing an appeal brief in anapplication or ex parte reexamination proceeding,and 37 CFR 41.20(b)(3) for a request for oralhearing.

Effective March 19, 2013, the fee for filing an appealbrief in an application or ex parte reexamination(37 CFR 41.20(b)(2)(i)) was reduced to $0, and anew fee for forwarding an appeal in an applicationor ex parte reexamination proceeding to the Board

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after the mailing of an examiner's answer was addedat 37 CFR 41.20(b)(4). See 37 CFR 41.45 and MPEP§ 1208.01 for additional information pertaining tothe forwarding fee.

II. APPEAL BY PATENT APPLICANT

Under 37 CFR 41.31(a)(1), an applicant for a patentdissatisfied with the primary examiner’s decision inthe second or subsequent rejection of the applicant'sclaims may appeal to the Board for review of theexaminer’s rejection by filing a notice of appeal andthe required fee set forth in 37 CFR 41.20(b)(1)within the time period provided under 37 CFR 1.134and 1.136. A notice of appeal may be filed after anyof the claims has been twice rejected, regardless ofwhether the claim(s) has/have been finally rejected.The limitation of “twice rejected” does not have tobe related to a particular application. See Ex ParteLemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. &Inter. 1994) (“so long as the applicant has twice beendenied a patent, an appeal may be filed”). Forexample, if any claim was rejected in a parentapplication, and the claim is again rejected in acontinuing application, then applicant can choose tofile an appeal in the continuing application, even ifthe claim was rejected only once in the continuingapplication. Applicant cannot file an appeal in acontinuing application, or after filing a request forcontinued examination (RCE) under 37 CFR 1.114,until the application is under a rejection.Accordingly, applicant cannot file a notice of appealwith an RCE, even if the application has been twicerejected prior to the filing of the RCE.

If appellant files an amendment, a notice of appealand an appeal brief on the same date after the mailingof a final action, 37 CFR 1.116 applies. Such anamendment filed after a final action is not enteredas a matter of right. It may be admitted if it cancelsclaims or complies with all requirements of formexpressly set forth in previous Office actions;presents rejected claims in better form forconsideration on appeal; or amends the specification,including claims, upon a showing of good andsufficient reasons why the amendment is necessaryand was not earlier presented.

If applicant files a reply under 37 CFR 1.111 inresponse to a second or subsequent non-final

rejection and later files a notice of appeal before theOffice considers the reply, or the reply is filed onthe same day as the notice of appeal, the notice ofappeal is defective and the Office will answer thereply under 37 CFR 1.111 in due course. Ordinarily,a notice of appeal would have been proper when atleast one claim has been twice rejected. In thisinstance, however, since applicant has elected torequest reconsideration of the rejection (or furtherexamination) by filing a reply under 37 CFR 1.111rather than directly appealing from the secondnon-final rejection, the notice of appeal is premature.The Office has not had the opportunity to considerthe reply under 37 CFR 1.111 and issue an Officeaction in view of the reply. (Note that this is differentthan after-final situations where a reply under 37CFR 1.116 is not entered as matter of right andapplicant is appealing from the final rejection).Applicant must wait to file any appeal until theexaminer considers the reply and the claims arerejected again. Once the Office action is mailed inresponse to the reply applicant may file anothernotice of appeal under 37 CFR 41.31.

Under 37 CFR 41.31(c), an applicant is presumedto be appealing all claims under rejection in aparticular application unless cancelled by anamendment filed by the applicant and entered by theOffice. Thus, an appeal is presumed to be taken fromthe rejection of all pending claims under rejectionin the application regardless of whether the noticeof appeal identifies fewer or more than all pendingclaims under rejection. If an appellant does not filean amendment cancelling claims that the appellantdoes not wish to appeal, but then also fails to provideany argument in the appeal brief directed to thoseclaims, any challenge to that ground of rejection hasbeen waived, and the Board has discretion to simplyaffirm any rejections against such claims. See e.g.Hyatt v. Dudas, 551 F.3d 1307, 1314, 89 USPQ2d1465, 1470, (Fed. Cir. 2008). See also MPEP §1205.02.

Although the rules do not require that the notice ofappeal be signed, applicants may file notices ofappeal which are signed. It should be noted that theelimination of the requirement to sign a notice ofappeal does not affect the requirements for otherpapers (such as an amendment under 37 CFR 1.116)submitted with the notice, or for other actions

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contained within the notice, e.g., an authorization tocharge fees to a deposit account or to a credit card,to be signed. See MPEP § 509. Thus, failure to signthe notice of appeal may have unintended adverseconsequences; for example, if an unsigned notice ofappeal contains an (unsigned) authorization to chargethe notice of appeal fee to a deposit account, thenotice of appeal will be unacceptable because thenotice of appeal fee is lacking.

The notice of appeal must be filed within the periodfor reply set in the last Office action, which isnormally three months for applications. See MPEP§ 714.13. For example, failure to remove all groundsof rejection and otherwise place an application incondition for allowance or to file an appeal afterfinal rejection will result in the application becomingabandoned, even if one or more claims have beenallowed. The notice of appeal and appropriate feemay be filed up to six months from the date of theOffice action (e.g., a final rejection) from which theappeal was taken, so long as an appropriate petitionand fee for an extension of time under 37 CFR1.136(a) is filed either prior to or with the notice ofappeal.

The use of a separate letter containing the notice ofappeal is strongly recommended. Form PTO/SB/31may be used for filing a notice of appeal. Appellantmust file an appeal brief in compliance with 37 CFR41.37 accompanied by the fee set forth in 37 CFR41.20(b)(2) within two months from the date of filingthe notice of appeal. See MPEP § 1205. EffectiveMarch 19, 2013, the fee for filing an appeal brief inan application or ex parte reexamination was set at$0. For as long as this fee remains at $0, appealbriefs will not be held defective for failure to paythis fee or make any statement about this fee.

III. APPEAL BY PATENT OWNER

37 CFR 41.31(a)(2) and (a)(3) provide for appeal tothe Board by the patent owner from any decision inan ex parte reexamination proceeding adverse topatentability, in accordance with 35 U.S.C. 306 and35 U.S.C. 134. See also MPEP § 2273.

In an ex parte reexamination filed before November29, 1999, the patent owner may appeal to the Boardafter the second rejection of the claims.

In an ex parte reexamination filed on or afterNovember 29, 1999, the patent owner may appealto the Board only after the final rejection of one ormore claims in the particular reexaminationproceeding for which appeal is sought.

The fee for filing the notice of appeal by a patentowner is set forth in 37 CFR 41.20(b)(1), and thetime period to pay the fee is determined as providedin 37 CFR 1.134 and 37 CFR 1.550(c).

Failure to file an appeal in an ex parte reexaminationproceeding will result in issuance of thereexamination certificate under 37 CFR 1.570.

Appeals to the Board in inter partes reexaminationproceedings filed under 35 U.S.C. 311 are governedby 37 CFR 41.60 through 41.81. 37 CFR 41.30through 41.54 are not applicable to appeals in interpartes reexamination proceedings. See MPEP § 2674to § 2683 for appeals in inter partes reexaminationproceedings.

The use of a separate letter containing the notice ofappeal is strongly recommended. Form PTO/SB/31or Form PTO/AIA/31 may be used for filing a noticeof appeal.

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IV. ACKNOWLEDGEMENT

Appellant may check the status of the applicationand the receipt date of the notice of appeal on theOffice’s Patent Application Information Retrieval(PAIR) system via the Internet.

Where the notice of appeal is filed by mail, theOffice does not acknowledge receipt by separateletter. However, if a self-addressed postcard isincluded with the notice of appeal, it will be datestamped and mailed. See MPEP § 503, subsectionIII.

V. DEFECTIVE NOTICE OF APPEAL

Notices of appeal are reviewed by the Patent AppealCenter. If a notice of appeal is defective, the Officewill notify the applicant of the non-compliance. Anotice of appeal is not a proper reply to the lastOffice action if none of applicant's claims have beentwice rejected. A notice of appeal is defective if itwas not timely filed within the time period set forthin the last Office action, or the notice of appeal fee

set forth in 37 CFR 41.20(b)(1) was not timely filed.Form PTOL-461 (Rev. 9-04 or later),Communication Re: Appeal, should be used toindicate defects in a notice of appeal. Thiscommunication is done by the Patent Appeal Centerrather than by the examiner. In the rare event thatthese defects are identified after the notice of appealis entered, the examiner should contact the PatentAppeal Center to determine the appropriate actionto take.

When appellant files an appeal brief without firstfiling a notice of appeal, the Office treats the appealbrief as a notice of appeal and an appeal brief. Forthis situation, appellant must file the brief within thetime period for reply set forth in the last Officeaction and the brief must be accompanied by the feesunder 37 CFR 41.20(b)(1) and (b)(2) for filing anotice of appeal and an appeal brief in compliancewith 37 CFR 41.31 and 41.37. Effective March 19,2013, the fee for filing an appeal brief in anapplication or ex parte reexamination was set at $0.For as long as this fee remains at $0, appeal briefswill not be held defective for failure to pay this feeor make any statement about this fee.

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1204.01 Reinstatement of Appeal [R-11.2013]

If an appellant wishes to reinstate an appeal afterprosecution is reopened, appellant must file a newnotice of appeal in compliance with 37 CFR 41.31and a complete new appeal brief in compliance with37 CFR 41.37. Any previously paid appeal fees setforth in 37 CFR 41.20 for filing a notice of appeal,filing an appeal brief (if applicable), requesting anoral hearing (if applicable) and forwarding the appealto the Board (if applicable) will be applied to thenew appeal on the same application as long as a finalBoard decision has not been made on the priorappeal. If, however, the appeal fees have increasedsince they were previously paid, then appellant mustpay the difference between the current fee(s) and theamount previously paid. Appellant must file acomplete new appeal brief in compliance with theformat and content requirements of 37 CFR 41.37(c)within two months from the date of filing the newnotice of appeal. See MPEP § 1205.

1204.02 Pre-Appeal Brief Review Requestand Conference Pilot Program [R-08.2017]

Since July of 2005 the Office has provided anongoing pilot program in which an appellant, uponthe filing of a notice of appeal may also request apre-appeal brief review. See “Pre-Appeal BriefConference Pilot Program,” 1296 OG 67 (July12, 2005) and “Extension of the Pilot Pre-AppealBrief Conference Program,” 1303 OG 21(February 7, 2006). This program does not applyto reexamination proceedings. Presenting a requestfor pre-appeal brief review does not change the feerequired to file a notice of appeal and does notrequire a separate fee. No extensions of time to filethe request for review later than the notice of appealare available.

In order to be proper the applicant must file a noticeof appeal in compliance with 37 CFR 41.31. Therequest for pre-appeal brief review must be filedwith the filing of the notice of appeal and before thefiling of an appeal brief. Form PTO/AIA/33,“Pre-Appeal Brief Request for Review” may be usedfor filing the request. The request must beaccompanied by arguments in a separate paperentitled, “Pre-Appeal Brief Request for Review”.The request may not exceed five (5) total pages and

should provide a succinct, concise and focused setof arguments for which the review is beingrequested. Requests are limited to appealable, notpetitionable matters. See MPEP § 1201. A requestthat fails to comply with these requirements shouldbe dismissed.

Upon receipt of a properly filed request, a supervisorwill designate a panel of appropriate reviewers toreview the appellant's remarks and the examiner'srejections. The panel will include at least asupervisor and the examiner of record and will havethe authority to reopen prosecution if appropriate.The appellant will not be permitted to attend thereview and no interviews will be granted prior toissuance of the pre-appeal brief review decision.

After the review is complete, the Office will mail adecision on the status of the application. The decisionwill state one of the following:

(A) The application remains under appealbecause there is at least one actual issue for appeal.

(B) Prosecution on the merits is reopened andan appropriate Office communication will follow indue course. In appropriate circumstances, a proposedamendment may accompany the panel’s decisionproposing changes that, if accepted, may result inan indication of allowability for the contestedclaim(s).

(C) The application is allowed on the existingclaims and prosecution remains closed.

(D) The request fails to comply with thesubmission requirements and is dismissed.

The panel’s review will be terminated if the applicantfiles any of the following responses after filing arequest, but prior to a decision by the appointedpanel of examiners assigned to conduct the review.

(A) An appeal brief.

(B) A request for continued examination.

(C) An after final amendment.

(D) An affidavit or other evidence.

(E) An express abandonment.

After a panel decision, the time period for filing anappeal brief will be reset to be one month from the

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mailing of the decision on the request, or the balanceof the two-month time period running from thereceipt of the notice of appeal, whichever greater.Further, the time period for filing of the appeal briefis extendible under 37 CFR 1.136.

For as long as this pilot program remains in effect,submission of a pre-appeal review request mayextend the period for filing an appeal brief until adecision is made on the request or the request isotherwise dismissed.

1204.03 Interviews After Notice of Appeal[R-11.2013]

As indicated in MPEP § 713.09, one interview afterfinal rejection is normally permitted. Where a noticeof appeal is filed in an application or ex parte reexamination, the phrase "after final rejection"includes only the time from the mailing of the finalrejection through the filing of an appeal brief.However, as indicated in the notice "Pre-AppealBrief Conference Pilot Program," 1296 OG 76(July 12, 2005), no interviews will be granted fromthe filing of a request for pre-appeal review throughissuance of a decision on the request. See MPEP §1204.02.

Except in unusual situations, no interview ispermitted after the appeal brief is filed. See MPEP§ 713.05. Where an appeal brief is filed in anapplication or ex parte reexamination, the phrase"after the appeal brief is filed" includes the time fromfiling of the appeal brief through the first of adecision by the Board, the mailing by the examinerof a rejection or other paper with a response period,the mailing of a notice of defective appeal brief, orthe mailing of a notice of allowance.

Effective March 19, 2013, 37 CFR 41.20(b)(4) setsa fee to forward an appeal to the Board after themailing of an examiner’s answer. While appellantsmay desire an interview after mailing of anexaminer’s answer and prior to payment of this fee,interviews during this time period are likely toconfuse the record on appeal and are not permittedexcept in unusual situations. These unusualcircumstances may include situations whereappellant wishes to cancel all appealed claims andproceed to issue with claims previously indicated as

allowable, or where the examiner is convinced thatsome but not all of the previously rejected claimsare in condition for allowance.

After the time specified in 37 CFR 41.35(a), theapplication or ex parte reexamination is no longerunder the jurisdiction of the examiner. While theexaminer has no jurisdiction over a proceeding afterthe time set in 37 CFR 41.35(a), the Director of theUSPTO or appropriate delegate has the authority toremand the proceeding to the examiner under 37CFR 41.35(c). Requests for interviews on casesunder the jurisdiction of the Board should be grantedonly with specific approval of the Technology CenterDirector upon a showing in writing of extraordinarycircumstances that justify a remand from the Boardto the examiner in order to conduct an interview.

1204.04 Official Record on Appeal[R-08.2017]

37 CFR 41.30 Definitions.*****

Evidence means something (including testimony, documentsand tangible objects) that tends to prove or disprove the existenceof an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be citedbefore the Board.

*****

Record means the items listed in the content listing of the ImageFile Wrapper of the official file of the application orreexamination proceeding on appeal or the official file of theOffice if other than the Image File Wrapper, excludingamendments, Evidence, and other documents that were notentered. In the case of an issued patent being reissued orreexamined, the Record further includes the Record of thepatent being reissued or reexamined.

The official record on appeal contains the itemslisted in the content listing of the Image File Wrapperor the official file of the Office if other than theImage File Wrapper, excluding any amendments,evidence, or other documents that were not enteredor indicated considered by the examiner. Becausean examiner’s refusal to enter an amendment,evidence, or other document is a petitionable matterthat is not subject to review by the Board, theexclusion of such non-entered documents from thedefinition of "Record" reflects the fact that theBoard’s review of patentability determinations is

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1204.03

properly based on the record of all entered andindicated considered documents in the file.

An information disclosure statement or petition thatis held in abeyance while the Board possessesjurisdiction over the proceeding is not an entered orindicated considered document and therefore isexcluded from the definition of ‘‘Record’’ until suchtime as it is entered or indicated to have beenconsidered.

The definition of ‘‘Record’’ includes the items listedin the content listing of the Image File Wrapperbecause, in some cases, physical items that form partof the official file are not able to be scanned into theImage File Wrapper and are maintained elsewhere,such as in an artifact file. Some examples of suchitems include original drawings in design patentapplications and sequence listings. In such cases,the Image File Wrapper will include an entry in thecontent listing that points to this artifact file or otherrecord.

In the case of an issued patent being reissued orreexamined, the Record further includes the Recordof the patent being reissued or reexamined.

All references listed on an Information DisclosureStatement (i.e., Form PTO/SB/08a or 08b), whichhave been indicated as having been considered bythe examiner, or listed on a form PTO-892 areincluded in the definition of Record even if each ofthe so listed references does not separately appearin the content listing of the Image File Wrapper.

For the purposes of appeal, ‘‘Evidence’’ does notencompass dictionaries. Excluding dictionaries fromthe definition of ‘‘Evidence’’ thus allows appellantsto refer to dictionaries in their briefs, which wouldotherwise be precluded under 37 CFR 41.33(d)(2)(absent existence of one of the enumeratedexceptions). It further allows examiners to refer todictionaries in the examiner’s answers withoutautomatically rendering a rejection a new groundunder 37 CFR 41.39(a)(2). Treating dictionaries inthis manner is consistent with Supreme Court andFederal Circuit precedent, which contemplate thatsuch materials may be consulted by tribunals ‘‘atany time.’’ See, e.g., Nix v. Hedden, 149 U.S. 304,307 (1893) (citations omitted) (admitting dictionaries

to understand the ordinary meaning of terms ‘‘notas evidence, but only as aids to the memory andunderstanding of the court’’); Phillips v. AWHCorp., 415 F.3d 1303, 1322–23, 75 USPQ2d 1321,1333 (Fed. Cir. 2005) (en banc ) (‘‘[J]udges are freeto consult dictionaries and technical treatises at anytime in order to better understand the underlyingtechnology and may also rely on dictionarydefinitions when construing claim terms, so long asthe dictionary definition does not contradict anydefinition found in or ascertained by a reading ofthe patent documents.’’) (citation omitted); In reBoon, 439 F.2d 724, 727–28, 169 USPQ 231, 234(CCPA 1971) (holding citation to dictionary was nottantamount to the assertion of a new ground ofrejection ‘‘where such a reference is a standard work,cited only to support a fact judicially noticed and,as here, the fact so noticed plays a minor role,serving only to fill in the gaps which might exist inthe evidentiary showing made by the Examiner tosupport a particular ground for rejection.’’ (emphasisand internal quotations omitted)). Thus, 37 CFR41.30 permits both the applicant and examiner tosubmit them to the Board during the briefing stage.

1205 Appeal Brief [R-11.2013]

37 CFR 41.37 Appeal brief.

(a) Timing. Appellant must file a brief under this sectionwithin two months from the date of filing the notice of appealunder § 41.31. The appeal brief fee in an application or ex parte reexamination proceeding is $0.00, but if the appeal results inan examiner's answer, the appeal forwarding fee set forth in §37 CFR 41.20(b)(4) must be paid within the time periodspecified in § 41.45 to avoid dismissal of an appeal.

(b) Failure to file a brief. On failure to file the brief withinthe period specified in paragraph (a) of this section, the appealwill stand dismissed.

(c) Content of appeal brief.

(1) Except as otherwise provided in this paragraph, thebrief shall contain the following items under appropriateheadings and in the order indicated in paragraphs (c)(1)(i)through (v) of this section, except that a brief filed by anappellant who is not represented by a registered practitionerneed only substantially comply with paragraphs (c)(1)(i),(c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this section:

(i) Real party in interest. A statement identifyingby name the real party in interest at the time the appeal brief isfiled, except that such statement is not required if the namedinventor or inventors are themselves the real party in interest.If an appeal brief does not contain a statement of the real partyin interest, the Office may assume that the named inventor orinventors are the real party in interest.

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§ 1205APPEAL

(ii) Related appeals, interferences, and trials. Astatement identifying by application, patent, appeal, interference,or trial number all other prior and pending appeals, interferences,trials before the Board, or judicial proceedings (collectively,"related cases") which satisfy all of the following conditions:involve an application or patent owned by the appellant orassignee, are known to appellant, the appellant’s legalrepresentative, or assignee, and may be related to, directly affector be directly affected by or have a bearing on the Board’sdecision in the pending appeal, except that such statement is notrequired if there are no such related cases. If an appeal briefdoes not contain a statement of related cases, the Office mayassume that there are no such related cases.

(iii) Summary of claimed subject matter. A conciseexplanation of the subject matter defined in each of the rejectedindependent claims, which shall refer to the specification in theRecord by page and line number or by paragraph number, andto the drawing, if any, by reference characters. For each rejectedindependent claim, and for each dependent claim arguedseparately under the provisions of paragraph (c)(1)(iv) of thissection, if the claim contains a means plus function or step plusfunction recitation as permitted by 35 U.S.C. 112(f), then theconcise explanation must identify the structure, material, or actsdescribed in the specification in the Record as correspondingto each claimed function with reference to the specification inthe Record by page and line number or by paragraph number,and to the drawing, if any, by reference characters. Referenceto the patent application publication does not satisfy therequirements of this paragraph.

(iv) Argument. The arguments of appellant withrespect to each ground of rejection, and the basis therefor, withcitations of the statutes, regulations, authorities, and parts of theRecord relied on. The arguments shall explain why the examinererred as to each ground of rejection contested by appellant.Except as provided for in §§ 41.41, 41.47 and 41.52, anyarguments or authorities not included in the appeal brief will berefused consideration by the Board for purposes of the presentappeal. Each ground of rejection contested by appellant mustbe argued under a separate heading, and each heading shallreasonably identify the ground of rejection being contested (e.g.,by claim number, statutory basis, and applied reference, if any).For each ground of rejection applying to two or more claims,the claims may be argued separately (claims are considered byappellant as separately patentable), as a group (all claims subjectto the ground of rejection stand or fall together), or as a subgroup(a subset of the claims subject to the ground of rejection standor fall together). When multiple claims subject to the sameground of rejection are argued as a group or subgroup byappellant, the Board may select a single claim from the groupor subgroup and may decide the appeal as to the ground ofrejection with respect to the group or subgroup on the basis ofthe selected claim alone. Notwithstanding any other provisionof this paragraph, the failure of appellant to separately argueclaims which appellant has grouped together shall constitute awaiver of any argument that the Board must consider thepatentability of any grouped claim separately. Under eachheading identifying the ground of rejection being contested, anyclaim(s) argued separately or as a subgroup shall be arguedunder a separate subheading that identifies the claim(s) bynumber. A statement which merely points out what a claim

recites will not be considered an argument for separatepatentability of the claim.

(v) Claims appendix. An appendix containing acopy of the claims involved in the appeal.

(2) A brief shall not include any new or non-admittedamendment, or any new or non-admitted affidavit or otherEvidence. See § 37 CFR 1.116 of this title for treatment ofamendments, affidavits or other evidence filed after final actionbut before or on the same date of filing an appeal and § 41.33for treatment of amendments, affidavits or other Evidence filedafter the date of filing the appeal. Review of an examiner'srefusal to admit an amendment or Evidence is by petition to theDirector. See § 1.181 of this title.

(d) Notice of non-compliance. If a brief is filed which doesnot comply with all the requirements of paragraph (c) of thissection, appellant will be notified of the reasons fornon-compliance and given a time period within which to file anamended brief. If appellant does not, within the set time period,file an amended brief that overcomes all the reasons fornon-compliance stated in the notification, the appeal will standdismissed. Review of a determination of non-compliance is bypetition to the Chief Administrative Patent Judge. See § 41.3.

(e) Extensions of time. The time periods set forth in thissection are extendable under the provisions of § 1.136 of thistitle for patent applications and § 1.550(c) of this title for exparte reexamination proceedings.

1205.01 Time for Filing Appeal Brief[R-08.2017]

37 CFR 41.37(a) provides 2 months from the dateof the notice of appeal for the appellant to file anappeal brief and the appeal brief fee set forth in37 CFR 41.20(b)(2). Any brief in an application oran ex parte reeexamination proceeding filed on orafter March 19, 2013 need not be accompanied byan appeal brief fee as the 37 CFR 41.20(b)(2) feeamount on or after that date is set at $0.

The usual period of time in which appellant mustfile his or her brief is 2 months from the date of thenotice of appeal. The Office date of receipt of thenotice of appeal (and not the date indicated on anyCertificate of Mailing under 37 CFR 1.8) is the datefrom which this 2-month time period is measured.See MPEP § 512. If the notice of appeal is filed inaccordance with 37 CFR 1.10 using the Priority Mail

Express® service of the United States Postal Service(USPS), the date of deposit with the USPS is thedate from which this 2-month time period ismeasured because the date of deposit shown by the

“date accepted” on the Priority Mail Express® label

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1205.01

or other official USPS notation is considered to bethe date of receipt. See MPEP § 513.

37 CFR 41.37(a) does not permit the brief to be filedwithin the time allowed for reply to the action fromwhich the appeal was taken even if such time is later.Once appellant timely files a notice of appeal incompliance with 37 CFR 41.31, the time period forreply set forth in the last Office action is tolled andis no longer relevant for the time period for filingan appeal brief. For example, if appellant filed anotice of appeal within one month from the mailingof a final Office action which sets forth a 3-monthshortened statutory period for reply, and then theappellant filed an appeal brief after 2 months fromthe filing date of the notice of appeal, a petition foran extension of time for one month would berequired, even if the brief was filed but within three(3) months from the mailing of the final action.Similarly, if the appellant files a request forcontinued examination (RCE) under 37 CFR 1.114,instead of an appeal brief, after two (2) months fromthe filing date of the notice of appeal a petition foran extension of time would be required, even if theRCE was filed within three (3) months from themailing of the final action.

This 2-month time period for a patent applicationmay be extended under 37 CFR 1.136(a), and if37 CFR 1.136(a) is not available, under 37 CFR1.136(b) for extraordinary circumstances. In an exparte reexamination proceeding, the time periodcan be extended only under the provisions of 37 CFR1.550(c). See also MPEP § 2274.

In the event that the appellant finds that they areunable to file a brief within the time period allottedby the rule, they may file a petition for extension oftime under 37 CFR 1.136(a) with the appropriatefee. Additional time in excess of 5 months will notbe granted unless extraordinary circumstances areinvolved under 37 CFR 1.136(b). Where a properpetition for extension of time is filed, the new duedate is computed from the receipt date of the noticeof appeal, as opposed to the original due date. Forexample, if a notice of appeal’s receipt date isDecember 30, the appeal brief would be due on thefollowing February 28 (or 29, if it is a leap year), ifnot a Saturday, Sunday or federal holiday. If theperiod for filing an appeal brief is extended by one

month the appeal brief would be due on March 30,if not a Saturday, Sunday, or federal holiday.

¶ 12.210 Extension To File Brief - Granted

The request for an extension of time under 37 CFR 1.136(b) forfiling the appeal brief under 37 CFR 41.37 filed on [1] has beenapproved for [2].

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 2, insert the amount of time the extension oftime has been approved for.

3. This form paragraph should only be used when 37 CFR1.136(a) is not available or has been exhausted, such as inlitigation reissues or when appellant requests to reopenprosecution or file a reply brief as set forth in 37 CFR 41.39(b)and 37 CFR 41.50(a)(2).

¶ 12.211 Extension To File Brief - Denied

The request for an extension of time under 37 CFR 1.136(b) forfiling the appeal brief under 37 CFR 41.37 filed on [1] has beendisapproved because no sufficient cause for the extension hasbeen shown.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. This form paragraph should only be used when 37 CFR1.136(a) is not available or has been exhausted, such as inlitigation reissues or when appellant requests to reopenprosecution or file a reply brief as set forth in 37 CFR 41.39(b)and 37 CFR 41.50(a)(2) .

When an application is revived after abandonmentfor failure on the part of the appellant to takeappropriate action after final rejection, and thepetition to revive was accompanied by a notice ofappeal, appellant has 2 months, from the mailingdate of the Director’s affirmative decision on thepetition, in which to file the appeal brief. The timeperiod for filing the appeal brief may be extendedunder 37 CFR 1.136.

FAILURE TO TIMELY FILE AN APPEAL BRIEF

The appeal ordinarily will be dismissed if the briefis not filed within the period provided by 37 CFR41.37(a) or within such additional time as may beproperly extended. Effective March 19, 2013, thestatutory fee for filing an appeal brief was adjustedto $0. As long as the fee under 37 CFR 41.20(b)(2)remains $0, the appeal will not be dismissed forfailure to pay the fee.

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§ 1205.01APPEAL

A brief must be filed to preserve appellant’s right tothe appealed claims, notwithstanding circumstancessuch as:

(A) the filing of a petition to invoke thesupervisory authority of the Director under 37 CFR1.181;

(B) the filing of an amendment, even if it is onewhich the examiner previously has indicated mayplace one or more claims in condition for allowance,unless the examiner, in acting on the amendment,disposes of all issues on appeal;

(C) the receipt of a letter from the examinerstating that prosecution is suspended, without theexaminer withdrawing the final rejection from whichappeal has been taken.

Although failure to file the brief within thepermissible time will result in dismissal of theappeal, if any claims stand allowed the applicationdoes not become abandoned by the dismissal, but isreturned to the examiner for action on the allowedclaims. See MPEP § 1215.04. If there are no allowedclaims, the application is abandoned as of the datethe brief was due. Claims which have been objectedto as dependent from a rejected claim do not standallowed. In an ex parte reexamination proceeding,failure to file the brief will result in the issuance ofthe certificate under 37 CFR 1.570.

¶ 12.209 Appeal Dismissed - Allowed Claims, FormalMatters Remaining

In view of applicant’s failure to file a brief within the timeprescribed by 37 CFR 41.37(a), the appeal stands dismissed andthe proceedings as to the rejected claims are consideredterminated. See 37 CFR 1.197(b).

This application will be passed to issue on allowed claim [1]provided the following formal matters are corrected. Prosecutionis otherwise closed.

[2]

Applicant is required to make the necessary corrections withina shortened statutory period set to expire TWO MONTHS fromthe mailing date of this letter to avoid ABANDONMENT ofthe application. Extensions of time may be granted under 37CFR 1.136.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. This form paragraph should only be used if the formalmatters cannot be handled by examiner’s amendment. See MPEP§ 1215.04.

3. In bracket 2, insert a description of the formal matters tobe corrected.

4. Claims which have been indicated as containing allowablesubject matter but are objected to as being dependent upon arejected claim are to be considered as if they were rejected. SeeMPEP § 1215.04.

If the time for filing a brief has passed and theapplication has consequently become abandoned,the applicant may petition to revive the applicationunder 37 CFR 1.137, as in other cases ofabandonment. See MPEP § 711.03(c). If the appealis dismissed, but the application is not abandonedbecause there is at least one allowed claim, theapplicant may file a petition to reinstate the claimsand the appeal, but a showing equivalent to that ina petition to revive under 37 CFR 1.137 is required.See MPEP § 711.03(c). In addition to the petitionand petition fee, appellant must file:

(A) A request for continued examination (RCE)under 37 CFR 1.114 accompanied by a submission(i.e., a reply under 37 CFR 1.111) and the fee as setforth in 37 CFR 1.17(e) if the application is a utilityor plant application filed on or after June 8, 1995,or a continuing application under 37 CFR 1.53(b)(or a CPA under 37 CFR 1.53(d) if the applicationis a design application); or

(B) An appeal brief and the appeal brief fee toreinstate the appeal. Effective March 19, 2013, thestatutory fee for filing an appeal brief in anapplication or ex parte reexamination proceedingwas adjusted to $0. For so long as the fee under 37CFR 41.20(b)(2) remains $0, the appeal will not bedismissed for failure to pay the fee. A proper briefmust be filed before the petition will be consideredon its merits.

Where the dismissal of the appeal is believed to bein error, filing a petition, pointing out the error, maybe sufficient.

1205.02 Appeal Brief Content [R-08.2017]

Only one copy of the appeal brief is required. Anybrief for which the notice of appeal was filed on orafter January 23, 2012 must comply with therequirements set forth in current 37 CFR 41.37. For

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1205.02

information pertaining to the Board’s ex parte appeal practice and procedure that is applicable ifthe notice of appeal was filed before January 23,2012 (or if proceedings were commenced beforeSeptember 16, 2012), see Chapter 1200 in the MPEP8th Edition, Rev. 9 (August 2012)(available on theUSPTO web site at www.uspto.gov/web/offices/pac/mpep.htm).

Appellant must file a brief under 37 CFR 41.37within two months from the date of filing the noticeof appeal under 37 CFR 41.31. The appeal brief feein an application or ex parte reexaminationproceeding is $0.00. For so long as the adjusted feefor filing an appeal brief remains at $0, the briefneed not be accompanied by an attempt to pay thefee under 37 CFR 41.20(b)(2). A brief that is filedon or after January 23, 2012 that fails to comply withthe requirements set forth in 37 CFR 41.37(c) shallbe held to be non-compliant under 37 CFR 41.37(d).The brief, as well as every other document relatingto an appeal, should indicate the number of theTechnology Center (TC) to which the application orpatent under reexamination is assigned and theapplication or reexamination control number. Oralargument at a hearing will not remedy deficienciesin a brief. The following discussion of the contentsof an appeal brief pertains to briefs filed pursuant tothe requirements set forth in 37 CFR 41.37.

An appellant’s brief must present argumentsresponsive to every ground of rejection stated by theexaminer in the Office action from which the appealhas been taken (as modified by any advisory actionand/or pre-appeal brief conference decision). See 37CFR 41.31(c) and 37 CFR 41.37(c)(1)(iv). If aground of rejection stated by the examiner is notaddressed in the appellant’s brief, appellant haswaived any challenge to that ground of rejection andthe Board may summarily sustain it, unless theexaminer subsequently withdrew the rejection in theexaminer’s answer. See 37 CFR 41.39(a)(1). Thefact that appellant may consider a ground to beclearly improper does not justify failure to point outto the Board the reasons for that belief, including anexplanation of why the examiner erred as to theground of rejection.

The mere filing of a document titled as a brief willnot necessarily be considered to be in compliance

with 37 CFR 41.37(c). The rule requires that thebrief must set forth arguments and the basis therefor,with citations of the statutes, regulations, authoritiesand parts of the record relied upon. It is essentialthat the Board be provided with a brief fully statingthe position of the appellant with respect to eachground of rejection presented for review in theappeal so that no search of the Record is required inorder to determine that position. Thus, the briefshould not incorporate or reference previousresponses. 37 CFR 41.37(c)(1) requires that the briefcontain specific items, as discussed below. The briefmust have all of the required items under appropriateheadings in the order indicated in 37 CFR41.37(c)(1). 37 CFR 41.37(c)(1) provides that incertain circumstances, the items listed in paragraphs(c)(1)(i) and (c)(1)(ii) may be omitted from an appealbrief and further provides that the Office may assumecertain information about the appeal should theseitems be omitted from the appeal brief. As such, theheadings are not required to be included in the appealbrief in the event that an item is not applicable (i.e.,the real party in interest is the inventor(s), or thereare no related appeals). To assist appellants incomplying with 37 CFR 41.37, the Board has postedchecklists for notices of appeal and appeal briefs onthe USPTO Web site at www.uspto.gov/patents-application-process/appealing-patent-decisions/procedures/guidance-reduce-non-compliant .

An exception to the requirement that all the itemsspecified in 37 CFR 41.37(c)(1) be included in thebrief is made if the application or reexaminationproceeding is being prosecuted by the appellant prose, i.e., there is no attorney or agent of record, andthe brief was neither prepared nor signed by aregistered attorney or agent. The brief of a pro se appellant which does not contain all of the itemsspecified in 37 CFR 41.37(c)(1) will be accepted aslong as it substantially complies with therequirements of subparagraphs (i), (ii), (iv) and (v).

While it is no longer a requirement to include anevidence appendix, the Office strongly encouragesand appreciates receiving copies of the evidencerelied upon (e.g., copies of declarations andaffidavits, evidence of secondary considerations,etc.). This ensures that the Board is considering theproper evidence and avoids any confusion as to theparticular evidence referenced in the appeal brief.

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§ 1205.02APPEAL

In the alternative, the Board recommends thatappellants clearly identify in the appeal brief theevidence relied upon using a clear description of theevidence along with the date of entry of suchevidence into the Image File Wrapper.

An amendment or other evidence submitted under37 CFR 1.116 or 37 CFR 41.33 will not be enteredas part of the record for the appeal unless entered bythe examiner.

The specific items required by 37 CFR 41.37(c)(1)are:

(i) Real party in interest. A statement identifyingby name the real party in interest at the time theappeal brief is filed, except that such statement isnot required if the named inventor or inventors arethemselves the real party in interest. If an appealbrief does not contain a statement of the real partyin interest, the Office may assume that the namedinventor or inventors are the real party in interest.

The identification of the real party in interest allowsmembers of the Board to comply with ethicsregulations associated with working in matters inwhich the member has a financial interest to avoidany potential conflict of interest. When anapplication is assigned to a subsidiary corporation,the real party in interest is both the assignee andeither the parent corporation or corporations, in thecase of joint ventures. One example of a statementidentifying the real party in interest is: The real partyin interest is XXXX corporation, the assignee ofrecord, which is a subsidiary of a joint venturebetween YYYY corporation and ZZZZ corporation.

(ii) Related appeals, interferences, and trials. Astatement identifying by application, patent, appeal,interference, or trial number all other prior andpending appeals, interferences, trials before theBoard, or judicial proceedings (collectively, "relatedcases") which satisfy all of the following conditions:Involve an application or patent owned by theappellant or assignee; are known to appellant, theappellant’s legal representative, or assignee; andmay be related to, directly affect or be directlyaffected by or have a bearing on the Board’s decisionin the pending appeal. If there are no such relatedcases, the appellant is not required to include the

statement, and if the appellant has not included thestatement, then the Office may assume that there areno such related cases.

The rule does not require Appellant to provide copiesof decisions in related cases.

(iii) Summary of claimed subject matter. A conciseexplanation of the subject matter defined in each ofthe rejected independent claims, which shall referto the specification in the Record by page and linenumber or by paragraph number, and to the drawing,if any, by reference characters. For each rejectedindependent claim, and for each dependent claimargued separately under the provisions of paragraph(c)(1)(iv) of this section, if the claim contains ameans plus function or step plus function recitationas permitted by 35 U.S.C. 112(f), then the conciseexplanation must identify the structure, material, oracts described in the specification in the Record ascorresponding to each claimed function withreference to the specification in the Record by pageand line number or by paragraph number, and to thedrawing, if any, by reference characters. Referenceto the patent application publication does not satisfythe requirements of this paragraph.

(iv) Argument. The arguments of appellant withrespect to each ground of rejection and the basistherefor, including citations of statutes, regulations,authorities and parts of the Record relied on, shouldbe presented in this section. The arguments shallexplain why the examiner erred as to each groundof rejection contested by appellant. See Ex parteFrye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (percuriam) (precedential) and In re Jung, 637 F.3d1356, 98 USPQ2d 1174 (Fed. Cir. 2011). Astatement which merely points out what a claimrecites will not be considered an argument forpatentability of the claim.

37 CFR 41.37(c)(1)(iv) contains the followingsentence:

Except as provided for in §§ 41.41, 41.47 and41.52, any arguments or authorities notincluded in the appeal brief will be refusedconsideration by the Board for purposes of thepresent appeal.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1205.02

This sentence emphasizes that all arguments andauthorities which an appellant wishes the Board toconsider for purposes of the present appeal shouldbe included in the appeal brief. It should be notedthat arguments not presented in the briefs and madefor the first time at the oral hearing are not normallyentitled to consideration except as provided for in37 CFR 41.47. In re Chiddix, 209 USPQ 78(Comm’r Pat. 1980); Rosenblum v. Hiroshima, 220USPQ 383 (Comm’r Pat. 1983).

This sentence is not intended to preclude the filingof a supplemental brief or document if new authorityshould become available or relevant after the briefor reply brief was filed. An example of suchcircumstances would be where a pertinent decisionof a court or other tribunal was not published untilafter the brief or reply brief was filed.

This sentence is also limited to “the present appeal”and is not intended to extend the Board’s refusal toconsider other arguments or authorities to subsequentappeals in the same application or to appeals in otherapplications.

Each ground of rejection must be argued under aseparate heading, which clearly identifies the groundof rejection being contested. For each ground ofrejection applying to two or more claims, the claimsmay be argued separately (claims are considered byappellants as separately patentable), as a group (allclaims subject to the ground of rejection stand orfall together), or as a subgroup (a subset of the claimssubject to the ground of rejection stand or falltogether). When multiple claims subject to the sameground of rejection are argued as a group orsubgroup by appellant, the Board may select a singleclaim from the group of claims and may decide theappeal as to the ground of rejection with respect tothe group or subgroup of claims as to the ground ofrejection on the basis of the selected claim alone.The failure of appellant to separately argue claimswhich appellant has grouped together constitutes awaiver of any argument that the Board must considerthe patentability of any grouped claim separately.See In re McDaniel, 293 F.3d 1379, 1384, 63USPQ2d 1462, 1465-66 (Fed. Cir. 2002). Undereach heading identifying the ground of rejectionbeing contested, any claim(s) argued separately or

as a subgroup shall be placed under a separatesubheading that identifies the claim(s) by number.

For example, if Claims 1 to 5 stand rejected under35 U.S.C. 102(a)(2) as being anticipated by U.S.Patent No. Y and appellant is arguing only thelimitations of independent claim 1, and therebygrouping dependent claims 2 to 5 to stand or fallwith independent claim 1, then one possible headingas required by this subsection could be “Rejectionunder 35 U.S.C. 102(a)(2) over U.S. Patent No. Y”and an optional subheading would be “Claims 1 to5.” Another example is where claims 1 to 3 standrejected under 35 U.S.C. 102(a)(2) as beinganticipated by U.S. Patent No. Z and appellantwishes to argue separately the patentability of eachclaim, a possible heading as required by thissubsection could be “Rejection under 35 U.S.C. 102(a)(2) over U.S. Patent No. Z,” and the requiredsubheadings would be “Claim 1,” “Claim 2” and“Claim 3.” Under each subheading the appellantwould present the argument for patentability of thatclaim. Another example is where claims 1-10 standrejected under 35 U.S.C. 102(a)(2) as beinganticipated over U.S. Patent No. X and appellantwishes to argue claims 1-3 as a first subgroup, claim4 separately, and claims 5-10 as another subgroup.A possible heading as required by this subsectioncould be “Rejection under 35 U.S.C. 102(a)(2) overU.S. Patent No. X,” and the required subheadingswould be “Claims 1-3,” “Claim 4,” and “Claims5-10.” To make certain that an argument for separateconsideration of a claim or subgroup of claims is notoverlooked by the examiner or by the Board, the rulerequires appellant to use a subheading for each claimfor which separate consideration by the Board isdesired.

(v) Claims appendix. An appendix containing a copyof the claims involved in the appeal.

The copy of the claims should be a clean copy andshould not include any markings such as bracketsor underlining except for claims in a reissueapplication and a reexamination proceeding. SeeMPEP § 1454 for the presentation of the copy of theclaims in a reissue application. See 37 CFR 1.530(d)and (f) for reexamination proceedings, see alsoMPEP § 2274 for ex parte reexamination and MPEP§ 2675 for inter partes reexamination.

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§ 1205.02APPEAL

The copy of the claims should be double-spaced andthe appendix should start on a new page. 37 CFR41.37(c)(1) merely specifies the minimumrequirements for a brief. An appellant may includein the brief a list of references, table of contents,table of cases, copies of evidence entered by theexaminer and relied upon in the brief, etc. A brief isin compliance with 37 CFR 41.37(c)(1) as long asit includes items (i) to (v) in the order set forth anddoes not include prohibited material.

37 CFR 41.37(c)(2) prohibits the inclusion in a briefof any new or non-admitted amendment, affidavitor other evidence. If an appellant wishes to seekreview of an examiner’s refusal to admit anamendment, affidavit or evidence, such review is bypetition to the Director under 37 CFR 1.181. Thetime for filing this petition, described in 37 CFR1.181(f), is based on the date the examiner refusedto enter the amendment, affidavit or evidence andnot the date the brief is filed.

An example of a format and content for an appealbrief for a patent application is a brief containingthe following items, with each item starting on aseparate page:

(A) Identification page setting forth theapplicant’s name(s), the application number, thefiling date of the application, the title of theinvention, the name of the examiner, the art unit ofthe examiner and the title of the paper (i.e., AppealBrief);

(B) Table of Contents page(s);

(C) Real party in interest page(s);

(D) Related appeals, interferences, and trialspage(s);

(E) Summary of claimed subject matter page(s);

(F) Argument page(s);

(G) Claims appendix page(s);

In accordance with the above, the brief must bedirected to the claims and to the record of the caseas they appeared at the time of the appeal. If anappellant wishes to remove claims fromconsideration on appeal, the appellant must submitan amendment to cancel the claims from theapplication. See 37 CFR 41.31(c) and 37 CFR 41.33.

An appellant may, of course, choose not to presentarguments or rely upon particular evidence as tocertain claim rejections; however, such argumentsand evidence are waived for purposes of the appealand the Board may summarily sustain any groundsof rejections not argued. Examiners should no longerfollow the practice described in Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008)(precedential, but superseded by rule). 37 CFR41.31(c) supersedes the Office’s procedure under Ghuman and also simplifies practice for examinersby no longer requiring examiners to cancelnon-appealed claims.

A timely filed brief will be referred to the PatentAppeal Center for consideration of its compliancewith the applicable rules. If the brief is proper it willbe forwarded to the examiner for preparation of anexaminer’s answer if the application is not allowable.The examiner’s answer may withdraw the rejectionof claims, if appropriate. The examiner, withsupervisory approval, may also determine that it isnecessary to reopen prosecution to enter a newground of rejection. See MPEP § 1207.04.

1205.03 Non-Compliant Appeal Brief andAmended Brief [R-08.2017]

The Patent Appeals Center has the responsibility fordetermining whether appeal briefs filed in patentapplications comply with 37 CFR 41.37, and willcomplete the determination before the appeal briefis forwarded to the examiner for consideration. Thedetermination should be completed withinapproximately one month from the filing of theappeal brief. If the appeal brief is determined to becompliant with the rules or it contains only minorinformalities that do not affect the Office’s abilityto render a decision, the Patent Appeals Center willaccept the appeal brief and forward it to the examinerfor consideration. If the Patent Appeals Centerdetermines that the appeal brief is non-compliantwith 37 CFR 41.37 and sends appellant a notice ofnon-compliant brief requiring a corrected brief,appellant will be required to file a corrected briefwithin the time period set forth in the notice to avoidthe dismissal of the appeal. The Patent AppealsCenter will also have the responsibility fordetermining whether corrected briefs comply with37 CFR 41.37.

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If appellant disagrees with the holding ofnoncompliance, a petition under 37 CFR 41.3 maybe filed. Filing a petition will not toll the time periodfor reply set in the notice. Appellant must timelyreply to the notice or the Office communication thatrequires an amended brief.

Once an appeal brief is accepted by the Board as incompliance with 37 CFR 41.37, the appeal brief willnot later be held as defective by the Patent AppealsCenter or the examiner. The Board will not returnor remand the application to the examiner for issuesrelated to a non-compliant appeal brief. Furthermore,examiners are not required to review appeal briefsfor the purposes of determining whether the appealbriefs comply with 37 CFR 41.37. Accordingly, theNotification of Non-Compliant Appeal Brief(PTOL-462) and form paragraphs for holding anappeal brief defective are no longer available inOACS for the examiner to use.

Furthermore, the Patent Appeals Center willcorrespond directly with the appellant onnon-compliant brief issues. Examiners may use formparagraphs 12.249 – 12.279.01 to draft examiner’sanswers to respond to appeal briefs filed in anyformat. In those rare situations where an appeal briefcontains serious defects that will prevent theexaminer from drafting an examiner’s answer, theprimary examiner should report the issue to thePatent Appeals Center.

The patent examining corps has jurisdiction over theapplication to consider the appeal brief, conduct anappeal conference, decide the entry of amendments,evidence, and information disclosure statements filedafter final or after the filing of a notice of appeal,and draft an examiner’s answer until jurisdictionpasses to the Board pursuant to 37 CFR 41.35(a).Furthermore, petitions concerning the refusal to enteramendments and/or evidence remain delegatedaccording to MPEP §§ 1002.02(b) and 1002.02(c).

1206 Amendments and Affidavits or OtherEvidence Filed With or After Appeal[R-08.2017]

37 CFR 41.33 Amendments and affidavits or other evidenceafter appeal.

(a) Amendments filed after the date of filing an appealpursuant to § 41.31(a)(1) through (a)(3) and prior to the date a

brief is filed pursuant to § 41.37 may be admitted as providedin § 1.116 of this title.

(b) Amendments filed on or after the date of filing a briefpursuant to § 41.37 may be admitted:

(1) To cancel claims, where such cancellation does notaffect the scope of any other pending claim in the proceeding,or

(2) To rewrite dependent claims into independent form.

(c) All other amendments filed after the date of filing anappeal pursuant to § 41.31(a)(1) through (a)(3) will not beadmitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i),and 41.50(b)(1).

(d)(1) An affidavit or other Evidence filed after thedate of filing an appeal pursuant to § 41.31(a)(1) through (a)(3)and prior to the date of filing a brief pursuant to § 41.37 maybe admitted if the examiner determines that the affidavit or otherEvidence overcomes all rejections under appeal and that ashowing of good and sufficient reasons why the affidavit orother Evidence is necessary and was not earlier presented hasbeen made.

(2) All other affidavits or other Evidence filed after thedate of filing an appeal pursuant to § 41.31(a)(1) through (a)(3)will not be admitted except as permitted by §§ 41.39(b)(1),41.50(a)(2)(i), and 41.50(b)(1).

I. AMENDMENTS

A new amendment must be submitted in a separatepaper. Entry of a new amendment in an applicationon appeal is not a matter of right. The entry of anamendment (which may not include a new affidavit,declaration, exhibit or other evidence) submitted inan application on appeal is governed by 37 CFR41.33.

Amendments filed after the filing of a notice ofappeal, but prior to the date of filing a brief, may beadmitted only to:

(A) cancel claims;

(B) comply with any requirement of formexpressly set forth in a previous action;

(C) present rejected claims in better form forconsideration on appeal; or

(D) amend the specification or claims upon ashowing of good and sufficient reasons why theamendment is necessary and was not earlierpresented. See 37 CFR 41.33(a).

If the examiner denies the entry of such anamendment, the examiner should use formPTOL-303, “Advisory Action Before the Filing of

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an Appeal Brief,” to notify the applicant of thenon-entry and the reason for non-entry.

Amendments filed on or after the date of filing abrief pursuant to 37 CFR 41.37 and within the timeperiod set forth in 37 CFR 90.3may be admitted onlyto:

(A) cancel claims, where such cancellation doesnot affect the scope of any other pending claim inthe proceeding; or

(B) rewrite dependent claims into independentform.

37 CFR 41.37(c)(2) provides that a brief shall notinclude any non-admitted amendment. Thus,appellants may not include an amendment under 37CFR 41.33(b) in the appeal brief. Should appellantswish to file an amendment at the same time as abrief, appellants must submit such an amendment ina paper separate from the appeal brief.

Rewriting dependent claims into independent formas permitted under 37 CFR 41.33(b)(2) includes thefollowing situations:

(A) rewriting a dependent claim in independentform by adding thereto the limitations of the parentclaim(s); and

(B) rewriting an independent claim toincorporate therein all the subject matter of adependent claim, canceling the dependent claim andin conjunction therewith changing the dependencyof claims which had depended from the dependentclaim being canceled to the amended independentclaim that incorporates therein all the subject matterof the now canceled dependent claim.

Amendments filed after jurisdiction of the appeal istransferred to the Board are not considered prior tothe expiration of the time period set forth in 37 CFR90.3 unless the case is remanded by the Board forconsideration of the amendment. If an amendmentis considered non-compliant the applicant may notbe granted additional time to submit a substituteamendment. As such, it is recommended thatappellant rewrite dependent claims, which have beenobjected to as being allowable except for theirdependency on a rejected independent claim, beforethe appeal is forwarded to the Board. Such

amendments must be filed before the expiration ofthe time period set forth in 37 CFR 90.3, to avoidcancellation of the objected to claims. This includesdependent claims in which the rejections arewithdrawn by the examiner in the Examiner’sAnswer. See MPEP §§ 1214.06 and 1214.07.

If the examiner denies entry of an amendment filedon or after the date of filing a brief, the examinershould use form PTOL-304, “Advisory Action Afterthe Filing of an Appeal Brief,” to notify the applicantof the non-entry and the reason for non-entry.

Examiners must respond to all amendments filedafter an appeal has been taken and prior to transferof jurisdiction to the Board under 37 CFR 41.35(a).If the examiner indicates (in the advisory action)that an amendment would be entered, it is imperativefor the examiner to also state (in the same advisoryaction) how the individual rejection(s) set forth inthe final Office action will be impacted by the entryof the amendment except where an amendmentmerely cancels claims or rewrites dependent claimsin independent form. If the examiner determines thatan amendment clearly places the application incondition for allowance, the examiner may enter theamendment and allow the application. Except foramendments that meet the conditions set forth above,all other amendments submitted after the date offiling a notice of appeal will not be entered exceptas permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i)and 41.50(b)(1).

See MPEP §§ 714.02, 714.12 and 714.13 for thetreatment of amendments, affidavits and otherevidence submitted after the mailing of a finalrejection or a non-final rejection, but prior to thefiling of a notice of appeal under 37 CFR 41.31(a).Any amendment, affidavit or other evidence filedafter the mailing date of a final Office action and onor before the date of the notice of appeal will betreated by the Office as being filed prior to the noticeof appeal and treated under 37 CFR 1.116. Anyamendment, affidavit or other evidence filed afterthe mailing date of a non-final Office action and onor before the date of notice of appeal will be treatedby the Office as being filed prior to the notice ofappeal and treated under 37 CFR 1.111.

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An amendment, affidavit or other evidence receivedafter jurisdiction has passed to the Board should notbe considered by the examiner unless remanded forthat purpose. See MPEP §§ 1210 and 1211.02.

II. AFFIDAVITS OR OTHER EVIDENCE

Affidavits or other evidence (e.g., declarations orexhibits) submitted after the date of filing a noticeof appeal, but prior to the date of filing a briefpursuant to 37 CFR 41.37, may be admitted if theexaminer determines that:

(A) the affidavits or other evidence overcomesall rejections under appeal; and

(B) a showing of good and sufficient reasonswhy the affidavit or other evidence is necessary andwas not earlier presented has been made.

If the examiner denies the entry of such an affidavitor other evidence, the examiner should use formPTOL-303, “Advisory Action Before the Filing ofan Appeal Brief,” to notify the applicant of thenon-entry and the reason for non-entry.

If the examiner determines that an affidavit or otherevidence clearly places the application in conditionfor allowance, the examiner may enter the affidavitor other evidence and allow the application. Exceptas noted above, all other affidavits or other evidencefiled after the date of filing a notice of appealpursuant to 37 CFR 41.31(a)(1) - (a)(3) will not beadmitted except as permitted by 37 CFR 41.39(b)(1),41.50(a)(2)(i) and 41.50(b)(1).

An amendment, affidavit or other evidence receivedafter jurisdiction has passed to the Board should notbe considered by the examiner unless remanded orreturned by the Board for such purpose. See MPEP§§ 1210 and 1211.02.

Information Disclosure Statements submitted afterthe date of a notice of appeal are normally held inabeyance pending a decision on the appeal.Consideration of Information Disclosure Statementsis based on MPEP § 609 and 37 CFR 1.97 and 1.98and not on 37 CFR 41.33.

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1207 Examiner’s Answer [R-11.2013]

37 CFR 41.39 Examiner’s answer.

(a) Content of examiner's answer. The primary examinermay, within such time as may be directed by the Director, furnisha written answer to the appeal brief.

(1) An examiner's answer is deemed to incorporate allof the grounds of rejection set forth in the Office action fromwhich the appeal is taken (as modified by any advisory actionand pre-appeal brief conference decision), unless the examiner'sanswer expressly indicates that a ground of rejection has beenwithdrawn.

(2) An examiner's answer may include a new groundof rejection. For purposes of the examiner's answer, any rejectionthat relies upon any Evidence not relied upon in the Office actionfrom which the appeal is taken (as modified by any advisoryaction) shall be designated by the primary examiner as a newground of rejection. The examiner must obtain the approval ofthe Director to furnish an answer that includes a new ground ofrejection.

(b) Appellant's response to new ground of rejection. If anexaminer’s answer contains a rejection designated as a newground of rejection, appellant must within two months from thedate of the examiner’s answer exercise one of the following twooptions to avoid sua sponte dismissal of the appeal as to theclaims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution bereopened before the primary examiner by filing a reply under§ 1.111 of this title with or without amendment or submissionof affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) orother Evidence. Any amendment or submission of affidavits orother Evidence must be relevant to the new ground of rejection.A request that complies with this paragraph will be entered andthe application or the patent under ex parte reexamination willbe reconsidered by the examiner under the provisions of § 1.112of this title. Any request that prosecution be reopened under thisparagraph will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as set forth in § 41.41. Sucha reply brief must address as set forth in § 41.37(c)(1)(iv) eachnew ground of rejection and should follow the otherrequirements of a brief as set forth in § 41.37(c). A reply briefmay not be accompanied by any amendment, affidavit (§§ 1.130,1.131 or 1.132 of this of this title) or other Evidence. If a replybrief filed pursuant to this section is accompanied by anyamendment, affidavit or other Evidence, it shall be treated as arequest that prosecution be reopened before the primaryexaminer under paragraph (b)(1) of this section.

(c) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiod set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

After an appeal brief under 37 CFR 41.37 has beenfiled and the examiner has considered the issues onappeal, the examiner may:

(A) reopen prosecution to enter a new groundof rejection with approval from the supervisorypatent examiner (see MPEP § 1207.04);

(B) allow the application if the examinerdetermines that the rejections have been overcomeand no new ground of rejection is appropriate; or

(C) maintain the appeal by conducting an appealconference (MPEP § 1207.01) and drafting anexaminer’s answer (MPEP § 1207.02).

1207.01 Appeal Conference [R-08.2017]

An appeal conference is mandatory in all cases inwhich an acceptable brief (MPEP § 1205) has beenfiled. However, if the examiner charged with theresponsibility of preparing the examiner’s answerreaches a conclusion that the appeal should not goforward and the supervisory patent examiner (SPE)approves, then no appeal conference is necessary.In this case, the examiner may reopen prosecutionand issue another Office action or may prepare anotice of allowability if appropriate. See MPEP §1207.04. In circumstances where a notice ofallowability is prepared, it may be appropriate toinclude reasons for allowance. See MPEP § 1302.14.

The participants of the appeal conference shouldinclude (1) the examiner charged with preparationof the examiner’s answer, (2) a supervisory patentexaminer (SPE), and (3) another examiner, knownas a conferee, having sufficient experience to be ofassistance in the consideration of the merits of theissues on appeal. During the appeal conference,consideration should be given to the possibility ofdropping cumulative art rejections and eliminatingtechnical rejections of doubtful value.

The examiner responsible for preparing theexaminer’s answer should weigh the arguments ofthe other examiners presented during the appealconference. If it is determined that the rejection(s)should be maintained, the examiner responsible forpreparing the examiner’s answer will prepare theexaminer’s answer.

On the examiner’s answer, below the primaryexaminer’s signature, the word “Conferees:” shouldbe included, followed by the typed or printed namesof the other two appeal conference participants.These two appeal conference participants must place

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their initials next to their name. This will make therecord clear that an appeal conference has been held.If the examiner's answer contains a new ground ofrejection, it must clearly designate the rejection asa new ground of rejection. 37 CFR 41.39 specifiesthat new grounds of rejection must be approved bythe Director - i.e., Director of the USPTO. Thisauthority has been delegated to the TechnologyCenter (TC) Directors or their designee(s). Theanswer must also include the signature of aTechnology Center (TC) Director or designee toindicate that they approve the new ground ofrejection. See MPEP § 1207.03 and form paragraph12.279.01

The Patent Appeals Center will review theexaminer’s answer to determine whether there is anindication that an appeal conference has been held.If the examiner’s answer does not contain theappropriate indication that an appeal conference hasbeen held (i.e., including the names of the confereesand identifying themselves as the conferees alongwith their initials), the Patent Appeals Center mayreturn the application to the examiner for correctiveaction.

1207.02 Contents of Examiner’s Answer[R-08.2017]

Examiner’s answers may be returned for correctionby the Patent Appeals Center if they do not complywith the guidelines set forth below.

(A) The examiner’s answer should include,under appropriate headings, in the order indicated,the following items:

(1) Grounds of Rejection to be Reviewed onAppeal.

A statement that every ground of rejection set forthin the Office action from which the appeal is taken(as modified by any advisory action and pre-appealbrief conference decision) is being maintained bythe examiner except for the grounds of rejection (ifany) listed under the subheading “WITHDRAWNREJECTIONS.”

The examiner must treat all pending, rejected claimsas being on appeal, and must maintain all of therejections set forth in the Office action from which

the appeal is taken, unless appellant has overcomethe rejection (e.g., by submitting persuasivearguments, an acceptable terminal disclaimer, orevidence). In situations where the appellant makesa request to hold a rejection in abeyance or did notpresent any argument on a rejection in the appealbrief, the examiner should maintain the rejection inthe examiner’s answer.

Withdrawn Rejections – Under thesubheading “WITHDRAWN REJECTIONS,” theexaminer should list any grounds of rejection thatare being withdrawn (e.g., those that have beenovercome by appellant.)

New Grounds of Rejection – Under thesubheading “NEW GROUNDS OF REJECTION,”the examiner must set forth any new grounds ofrejection. An examiner’s answer that contains a newground of rejection must be approved and signed bythe Director (or their designee). For each new groundof rejection, a complete explanation supporting therejection must be provided with a proper referenceto the applicable statute, prior art references reliedupon, and the claim numbers of the claims that aresubject to the rejection in the examiner’s answer.

(2) Response to Argument. A statement ofwhether the examiner disagrees with each of thearguments of appellant in the brief with respect tothe issues presented and an explanation of thereasons for disagreement with any such argument.The examiner must use headings and subheadingsparalleling the headings and subheadings utilized inthe appellant’s brief.

The examiner should furnish the appellant with awritten statement in answer to the appellant’s briefwithin 2 months after the receipt of the brief by theexaminer. While 37 CFR 41.39(a) states theexaminer “may” furnish a written answer, currentprocedures do not permit an appeal to proceed to theBoard without an examiner's answer. The mailingdate of the examiner's answer begins the period forfiling a reply brief, which in turn transfersjurisdiction to the Board as described in 37 CFR41.35(a). In addition, the mailing date of theexaminer's answer begins the time for appellants torequest for an oral hearing as described in 37 CFR41.47(b). In the event that the final rejection fullyaddresses the arguments in the appeal brief, theexaminer should complete an examiner's answer

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§ 1207.02APPEAL

with a typical “Grounds of Rejection to be Reviewedon Appeal” section and a simplified “Response toArguments” section that simply refers to theappropriate portion of the final rejection.

Before preparing the answer, the examiner shouldmake certain that each after-final amendment orevidence has been indicated as being entered ornot-entered and an advisory action has been enteredfor each after-final amendment or evidence to notifythe appellant of the entry or non-entry. The Boardmay remand to the examiner any application inwhich an after-final amendment or evidence has notbeen indicated as entered or not-entered and actedupon in an advisory action.

The examiner should treat affidavits, declarations,or exhibits filed with the notice of appeal inaccordance with 37 CFR 1.116. If an affidavit,declaration, or exhibit was refused entry in theRecord under 37 CFR 1.116 or prohibited by 37 CFR41.33, the examiner should not comment on it in theexaminer’s answer. Likewise, it would be improperfor appellant to rely on an affidavit, declaration, orexhibit, which was not entered, in an appeal brief.If appellant has grounds for challenging thenon-entry of an affidavit, declaration, or exhibit,they should file a timely petition under 37 CFR 1.181seeking supervisory review of the non-entry. Anyaffidavits or declarations in the file swearing behinda reference should be clearly identified by theexaminer as being considered under 37 CFR 1.131.

If a document being relied upon by the examiner insupport of a rejection is in a language other thanEnglish, a translation must be obtained so that therecord is clear as to the precise facts the examineris relying upon in support of the rejection. Thetranslation may be a machine translation or anEnglish equivalent of the non-English document.See MPEP § 706.02 for reliance upon abstracts andforeign language documents in support of a rejection.

Examiners are not required to make anydetermination whether fewer than all of the rejectedclaims are identified by the appellant as beingappealed. The Board will presume that all of therejected claims are on appeal except for any claimssubsequently canceled by an amendment filed byappellant. Therefore, the examiner will treat all

pending, rejected claims as being on appeal, andmaintain all of the rejections set forth in the Officeaction from which the appeal is taken, unlessappellant has overcome the rejection (e.g., bysubmitting persuasive arguments, an acceptableterminal disclaimer, or evidence). In situations wherethe appellant makes a request to hold a rejection inabeyance or did not present any argument on arejection in the appeal brief, the examiner shouldmaintain the rejection in the examiner’s answer andshould identify that the appellant has not argued therejection in the appeal brief.

Because of the practice of the Office in enteringamendments after final action under justifiablecircumstances for purposes of appeal, many casescoming before the Board for consideration containclaims which are not the claims treated in theexaminer’s final rejection. They are either entirelynew claims or amended versions of the finallyrejected claims or both. Where an amendment under37 CFR 1.116 or 41.33 would be entered for appealpurposes, the examiner must identify (in an advisoryaction) how one or more individual rejections setforth in the final rejection would be used to rejectthe added or amended claim(s).

The examiner should reevaluate their position in thelight of the arguments presented in the brief, andshould expressly withdraw any rejections notadhered to in the “WITHDRAWN REJECTIONS”subsection of the examiner’s answer. If the examinerwithdraws all of the rejections of an independentclaim that was previously under rejection while stillmaintaining the rejections of other claims, then theanswer should note the change of status of theclaim(s). The answer should also include changesto the status of dependent claims should all rejectionsof a dependent claim be withdrawn. If the examinerwithdraws all rejections to a dependent claim, whilemaintaining the rejection of the independent claimfrom which the claim depends, the applicant mayfile an amendment pursuant to 37 CFR 41.33(b)(2)rewriting the claims in independent form. If therejection of the independent claim is affirmed onappeal, the amendment to rewrite the claim inindependent form under 37 CFR 41.33(b)(2) mustbe presented prior to the expiration of the time periodset forth in 37 CFR 90.3. See MPEP §§ 1214.06 and1214.07.

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A new ground of rejection is permitted in anexaminer’s answer. See MPEP § 1207.03. Ifreopening of prosecution is necessary, the examinermust obtain approval from the supervisory patentexaminer prior to reopening prosecution after anappeal. See MPEP § 1002.02(d) and § 1207.04.

All correspondence with the Board, whether by theexaminer or the appellant, must be on the record.No unpublished decisions which are unavailable tothe general public by reason of 35 U.S.C. 122(a) canbe cited by the examiner or the appellant except thateither the examiner or the appellant may cite anunpublished decision in an application havingcommon ownership with the application on appeal.

If an examiner’s answer is believed to contain a newinterpretation or application of the existing patentlaw, the examiner’s answer, application file, and anexplanatory memorandum should be forwarded tothe TC Director for consideration. See MPEP § 1003.If approved by the TC Director, the examiner’sanswer should be forwarded to the Office of theDeputy Commissioner for Patent Examination Policyfor final approval.

(B) FORM PARAGRAPHS. A form suitablefor the examiner’s answer is as follows:¶ 12.249 Examiner’s Answer Cover Sheet

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Application Number: [1]

Filing Date: [2]

Appellant(s): [3]

__________________

[4]

For Appellant

EXAMINER’S ANSWER

This is in response to the appeal brief filed [5].

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. This form paragraph is printed with the USPTO letterhead.

3. In bracket 1, insert the application number of the appealedapplication.

4. In bracket 2, insert the filing date of the appealedapplication.

5. In bracket 3, insert the name(s) of the appellant.

6. In bracket 4, insert the name of the registered representativeof the appellant.

7. In bracket 5, indicate the date on which the brief was filed.

¶ 12.254 Grounds of Rejection to be Reviewed on Appeal

(1) Grounds of Rejection to be Reviewed on Appeal

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. Follow this form paragraph with form paragraph 12.254.01or 12.254.02.

¶ 12.254.01 Statement of Grounds of Rejection, not modified

Every ground of rejection set forth in the Office action dated[1] from which the appeal is taken is being maintained by theexaminer except for the grounds of rejection (if any) listed underthe subheading “WITHDRAWN REJECTIONS.” New groundsof rejection (if any) are provided under the subheading “NEWGROUNDS OF REJECTION.”

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the mailing date of the Office actionfrom which the appeal is being taken.

3. Use form paragraph 12.255 to restate the grounds ofrejection and supporting rationale for each rejection involvedin the appeal, when needed.

4. Use form paragraph 12.256 to introduce any new groundsof rejection.

5. Use form paragraph 12.257 to withdraw a ground ofrejection previously made in the final Office action or last Officeaction.

6. Use this form paragraph when there was no modificationmade to the grounds of rejection in an advisory action orpre-appeal conference decision.

¶ 12.254.02 Statement of Grounds of Rejection, modified

The ground(s) of rejection set forth in the Office action dated[1] from which the appeal is taken have been modified by the[2] dated [3]. A list of rejections withdrawn by the examiner (ifany) is included under the subheading “WITHDRAWNREJECTIONS.” New grounds of rejection (if any) are providedunder the subheading “NEW GROUNDS OF REJECTION.”

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

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§ 1207.02APPEAL

2. In bracket 1, insert the mailing date of the Office actionfrom which the appeal is being taken.

3. In bracket 2, insert --advisory action-- and/or --pre-appealbrief conference decision--.

4. In bracket 3, insert the mailing date of the advisory actionand/or pre-appeal brief conference decision--.

5. Use form paragraph 12.255 to restate the grounds ofrejection and supporting rationale for each rejection involvedin the appeal, when needed.

6. Use form paragraph 12.256 to introduce any new groundsof rejection.

7. Use form paragraph 12.257 to withdraw a ground ofrejection previously made in the final Office action or last Officeaction.

8. Use this form paragraph when the grounds of rejectionwere modified in an advisory action or pre-appeal briefconference decision.

¶ 12.255 Restatement of Rejection

The following ground(s) of rejection are applicable to theappealed claims.

[1]

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. Precede this form paragraph with either 12.254.01 or12.254.02.

3. Use this form paragraph to optionally include a statementof rejection and/or supporting rationale for every ground ofrejection involved in the appeal.

4. Only use this form paragraph when the restatement of therejection does not include any new ground(s) of rejection.

5. In bracket 1, explain each ground of rejection maintainedby the examiner.

¶ 12.256 New Grounds of Rejection - Heading

NEW GROUNDS OF REJECTION

[1]

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. Any new ground(s) of rejection in the examiner’s answermust be prominently identified (e.g., using this form paragraph).

3. Provide a concise statement of each new ground of rejectionpresented for review in bracket 1; and

4. Conclude an examiner’s answer raising new grounds ofrejection with form paragraph 12.279.01: (1) to notify applicantof the reply period and options following the new grounds of

rejection; and (2) to include the required approval of the TCDirector or the TC Director's designee.

¶ 12.257 Withdrawn Rejections

WITHDRAWN REJECTIONS

The following grounds of rejection are not presented for reviewon appeal because they have been withdrawn by the examiner.[1].

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the grounds of rejection that have beenwithdrawn.

¶ 12.261 Response to Argument

(2) Response to Argument

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. If an issue raised by appellant was fully responded to underthe “Grounds of Rejection to be Reviewed on Appeal” portion,no additional response is required here.

3. If an issue has been raised by appellant that was not fullyresponded to under “Grounds of Rejection to be Reviewed onAppeal,” a full response must be provided after this formparagraph.

¶ 12.279 Conclusion to Examiner’s Answer, No NewGrounds of Rejection

For the above reasons, it is believed that the rejections shouldbe sustained.

Respectfully submitted,

[1]

Conferees:

[2]

[3]

Requirement to pay appeal forwarding fee. In order to avoiddismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment ofan appeal forwarding fee within the time permitted by 37 CFR41.45(a), unless appellant had timely paid the fee for filing abrief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

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2. In bracket 1, insert initials of the examiner and the date.

3. In bracket 2, insert names of the conferees. The confereesmust also place their initials next to their names.

4. In bracket 3, insert correspondence address of record.

5. If the examiner’s answer includes a new ground of rejection,use form paragraph 12.279.01 instead of this form paragraph.

¶ 12.279.01 Conclusion to Examiner’s Answer Raising NewGrounds of Rejection

For the above reasons, it is believed that the rejections shouldbe sustained.

This examiner’s answer contains a new ground of rejection setforth in section (1) above. Accordingly, appellant must withinTWO MONTHS from the date of this answer exercise one ofthe following two options to avoid sua sponte dismissal of theappeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopenedbefore the primary examiner by filing a reply under 37 CFR1.111 with or without amendment, affidavit or other evidence.Any amendment, affidavit or other evidence must be relevantto the new grounds of rejection. A request that complies with37 CFR 41.39(b)(1) will be entered and considered. Any requestthat prosecution be reopened will be treated as a request towithdraw the appeal.

(2) Maintain appeal. Request that the appeal be maintained byfiling a reply brief as set forth in 37 CFR 41.41. Such a replybrief must address each new ground of rejection as set forth in37 CFR 41.37(c)(1) and should be in compliance with the otherrequirements of 37 CFR 41.37(c). If a reply brief filed pursuantto 37 CFR 41.39(b)(2) is accompanied by any amendment,affidavit or other evidence, it shall be treated as a request thatprosecution be reopened before the primary examiner under 37CFR 41.39(b)(1).

Extensions of time under 37 CFR 1.136(a) are not applicableto the TWO MONTH time period set forth above. See 37 CFR1.136(b) for extensions of time to reply for patent applicationsand 37 CFR 1.550(c) for extensions of time to reply for ex partereexamination proceedings.

Respectfully submitted,

[1]

A Technology Center Director or designee must personallyapprove the new ground(s) of rejection set forth in section (1) above by signing below:

[2]

Conferees:

[3]

[4]

Requirement to pay appeal forwarding fee. In order to avoiddismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment ofan appeal forwarding fee within the time permitted by 37 CFR41.45(a), unless appellant had timely paid the fee for filing abrief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert initials of the examiner and the date.

3. In bracket 2, insert TC Director’s or designee’s signature. Allnew grounds of rejection must be approved by a TC Directoror designee.

4. In bracket 3, insert names of the conferees. The confereesmust also place their initials next to their names.

5. In bracket 4, insert correspondence address of record.

¶ 12.279.02 Dismissal Following New Ground(s) of Rejectionin Examiner’s Answer

Appellant failed to timely respond to the examiner’s answermailed on [1] that included a new ground of rejection. Under37 CFR 41.39(b) , if an examiner’s answer contains a rejectiondesignated as a new ground of rejection, appellant must, withintwo months from the date of the examiner’s answer, file either:(1) a request that prosecution be reopened by filing a reply under37 CFR 1.111; or (2) a request that the appeal be maintained byfiling a reply brief under 37 CFR 41.41, addressing each newground of rejection, to avoid sua sponte dismissal of the appealas to the claims subject to the new ground of rejection. In viewof appellant’s failure to file a reply under 37 CFR 1.111 or areply brief within the time period required by 37 CFR 41.39,the appeal as to claims [2] is dismissed, and these claims arecanceled.

Only claims [3] remain in the application. The appeal continuesas to these remaining claims. The application will be forwardedto the Board after mailing of this communication.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the mailing date of the examiner’sanswer.

3. In bracket 2, insert the claim numbers of the claims subjectto the new ground of rejection.

4. In bracket 3, insert the claim numbers of the claims thatare not subject to the new ground of rejection.

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§ 1207.02APPEAL

1207.03 New Ground of Rejection inExaminer’s Answer [R-08.2017]

37 CFR 41.39(a)(2) permits the entry of a newground of rejection in an examiner’s answer.

At the time of preparing the answer to an appealbrief, the examiner may decide that they shouldapply a new ground of rejection against some or allof the pending claims. In such an instance where anew ground of rejection is necessary, the examinershould either reopen prosecution or set forth the newground of rejection in the answer. The examinermust obtain supervisory approval in order to reopenprosecution after an appeal. See MPEP §§1002.02(d) and 1207.04.

I. REQUIREMENTS FOR A NEW GROUND OFREJECTION

Any new ground of rejection made by an examinerin an answer must be:

(A) approved by a Technology Center (TC)Director or designee; and

(B) prominently identified in the “Grounds ofRejection to be Reviewed on Appeal” section underthe subheading “New Grounds of Rejection” of theanswer (see MPEP § 1207.02). The examiner mayuse form paragraph 12.256.

The examiner’s answer must provide appellant atwo-month time period for reply. The examiner mayuse form paragraph 12.279.01 to notify appellant ofthe period for reply and to include the approval ofthe TC Director or designee. In response to anexaminer’s answer that contains a new ground ofrejection, appellant must either file:

(A) a reply in compliance with 37 CFR 1.111 torequest that prosecution be reopened; or

(B) a reply brief that addresses each new groundof rejection in compliance with 37 CFR41.37(c)(1)(iv) to maintain the appeal.

Appellant must file the reply or reply brief withintwo months from the date of the examiner’s answerto avoid sua sponte dismissal of the appeal as to theclaims subject to the new ground of rejection. See37 CFR 41.39(b) and subsection “V.

APPELLANT’S REPLY TO NEW GROUNDS OFREJECTION” below.

II. SITUATIONS WHERE NEW GROUNDS OFREJECTION ARE NOT PERMISSIBLE

A new ground of rejection would not be permittedto reject a previously allowed or objected to claimeven if the new ground of rejection would rely uponevidence already of Record. In this instance, ratherthan making a new ground of rejection in anexaminer’s answer, if the basis for the new groundof rejection was approved by a supervisory patentexaminer as currently set forth in MPEP § 1207.04,the examiner would reopen prosecution.

III. DESIGNATION AS A NEW GROUND OFREJECTION IN AN EXAMINER'S ANSWER

The following discussion is for the limited "purposesof the examiner’s answer," as per 37 CFR41.39(a)(2). This discussion does not apply to newgrounds of rejection made in final rejections under37 CFR 1.113. The reason for this distinction is that37 CFR 1.116 affords applicants the opportunity tosubmit rebuttal evidence after a final rejection buton or before the date of filing a notice of appeal. Anappellant’s ability to introduce new evidence afterthe filing of an appeal is more limited under 37 CFR41.33(d) than it is prior to the appeal. Thus,applicants are able to present rebuttal evidence inresponse to a final rejection, while they are notpermitted to do so in response to an examiner’sanswer on appeal, unless an answer is designated ascontaining a new ground of rejection.

If Evidence (such as a new prior art reference, butnot including a newly relied upon dictionarydefinition) is applied or cited for the first time in anexaminer’s answer, then 37 CFR 41.39(a)(2) requiresthat the rejection be designated as a new ground ofrejection. If the citation of a new prior art referenceis necessary to support a rejection, it must beincluded in the statement of rejection, which wouldbe considered to introduce a new ground of rejection.Even if the prior art reference is cited to support therejection in a minor capacity, it should be positivelyincluded in the statement of rejection and bedesignated as a new ground of rejection. In re Hoch,428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3

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(CCPA 1970). See MPEP § 2144.03 for guidanceon the citation of a new reference to support OfficialNotice taken in Office actions made prior to anexaminer’s answer.

See 37 CFR 41.30 and MPEP § 1204.04 for adetailed discussion of what constitutes "evidence"for the purposes of appeal.

A position or rationale that changes the “basic thrustof the rejection” will also give rise to a new groundof rejection. In re Kronig, 539 F.2d 1300, 1303, 190USPQ 425, 427 (CCPA 1976). A rejection relyingon the same statutory basis and same prior artreferences, may nevertheless raise a new ground ofrejection, when the rejection relies on new facts orrationales not previously raised. See In re Leithem,661 F.3d 1316, 100 USPQ2d 1155 (Fed. Cir. 2011); Rambus v. Rea, 731 F.3d 1248, 108 USPQ2d 1400(Fed. Cir. 2013) (the inclusion of a new motivationto combine prior art references did not merelyelaborate on the examiner’s findings with “moredetail”). However, the examiner need not useidentical language in both the examiner’s answerand the Office action from which the appeal is takento avoid triggering a new ground of rejection. It isnot a new ground of rejection, for example, if theexaminer’s answer responds to appellant’s argumentsusing different language, or restates the reasoningof the rejection in a different way, so long as the“basic thrust of the rejection” is the same. In reKronig, 539 F.2d at 1303, 190 USPQ at 427; seealso In re Jung, 637 F.3d 1356, 1364–65, 98USPQ2d 1174, 1180 (Fed. Cir. 2001) (additionalexplanation responding to arguments offered for thefirst time “did not change the rejection” andappellant had fair opportunity to respond); In reNoznick, 391 F.2d 946, 949, 157 USPQ 266, 269(CCPA 1968) (no new ground of rejection madewhen “explaining to appellants why their argumentswere ineffective to overcome the rejection made bythe examiner”); In re Krammes, 314 F.2d 813, 817,137 USPQ 60, 63 (CCPA 1963) (“It is wellestablished that mere difference in form ofexpression of the reasons for finding claimsunpatentable or unobvious over the references doesnot amount to reliance on a different ground ofrejection.” (citations omitted)); In re Cowles, 156F.2d 551, 555, 70 USPQ 419, 422 (CCPA 1946)

(holding that the use of "different language" doesnot necessarily trigger a new ground of rejection).

1207.03(a) Determining Whether a Groundof Rejection is New [R-08.2017]

I. SITUATIONS WHERE A GROUND OFREJECTION IS NEW

The following examples are intended to provideguidance as to what constitutes a new ground ofrejection in an examiner’s answer. What constitutesa “new ground of rejection” is a highly fact-specificquestion. See, e.g., Kronig, 539 F.2d at 1303, 190USPQ at 427 (finding new ground entered basedupon “facts of this case” and declining to find othercases controlling given “the distinctive facts at bar”); In re Ahlert, 424 F.2d 1088, 1092, 165 USPQ 418,421 (CCPA 1970) (“[l]ooking at the facts of thiscase, we are constrained to hold” that a new groundwas entered). If a situation arises that does not fallneatly within any of the following examples, it isrecommended that the examiner identify the examplebelow that is most analogous to the situation at hand,keeping in mind that “the ultimate criterion ofwhether a rejection is considered ‘new’ * * * iswhether appellants have had fair opportunity to reactto the thrust of the rejection.” Kronig, 539 F.2d at1302, 190 USPQ at 426.

Factual Situations That Constitute a New Ground ofRejection

1. Changing the statutory basis of rejection from35 U.S.C. 102 to 35 U.S.C. 103.

If the examiner’s answer changes the statutory basisof the rejection from 35 U.S.C. 102 to 35 U.S.C.103, then the rejection should be designated as a newground of rejection. For example, in In re Hughes,345 F.2d 184, 145 USPQ 467 (CCPA 1965), theBoard affirmed an examiner’s rejection under 35U.S.C. 102 over a single reference. On appeal, theSolicitor argued that the Board’s decision should besustained under 35 U.S.C. 103 over that samereference. The court declined to sustain the rejectionunder 35 U.S.C. 103, holding that a change in thestatutory basis of rejection would constitute a newground of rejection, and observed that “the issuesarising under the two sections [35 U.S.C. 102 and103] may be vastly different, and may call for the

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§ 1207.03(a)APPEAL

production and introduction of quite different typesof evidence.” Hughes, 345 F.2d at 186–87, 145USPQ at 469.

2. Changing the statutory basis of rejection from35 U.S.C. 103 to 35 U.S.C. 102, based on a differentteaching.

If the examiner’s answer changes the statutory basisof the rejection from 35 U.S.C. 103 to 35 U.S.C.102, and relies on a different portion of a referencewhich goes beyond the scope of the portion that waspreviously relied upon, then the rejection should bedesignated as a new ground of rejection. Forexample, in In re Echerd, 471 F.2d 632, 176 USPQ321 (CCPA 1973), the examiner rejected the claimsunder 35 U.S.C. 103 over a combination of tworeferences. The Board then changed the ground ofrejection to 35 U.S.C. 102 over one of thosereferences, relying on a different portion of thatreference for some claim limitations, and assertedthat the remaining claim limitations were inherentlypresent in that reference. The court held that theBoard’s affirmance constituted a new ground ofrejection. Echerd, 471 F.2d at 635, 176 USPQ at323 (“[A]ppellants should have been accorded anopportunity to present rebuttal evidence as to thenew assumptions of inherent characteristics. * * *”(citation omitted)).

3. Citing new calculations in support ofoverlapping ranges.

If a claim reciting a range is rejected as anticipatedor obvious based on prior art that falls within oroverlaps with the claimed range (see MPEP §§2131.03 and 2144.05), and the rejection is basedupon range values identified and calculated for thefirst time in the examiner’s answer, then the rejectionshould be designated as a new ground of rejection.For example, in In re Kumar, 418 F.3d 1361, 76USPQ2d 1048 (Fed. Cir. 2005), the examinerrejected the claims under 35 U.S.C. 103 based onoverlapping ranges of particle sizes and sizedistributions. The Board affirmed the rejection, butincluded in its decision an identification of specificvalues in the prior art and an appendix containingcalculations to support the prima facie case ofobviousness. The court held the Board’s relianceupon those values to constitute a new ground ofrejection, stating that “the Board found facts notfound by the examiner regarding the differences

between the prior art and the claimed invention,which in fairness required an opportunity forresponse.” Kumar, 418 F.3d at 1368, 76 USPQ2d at1052 (citation omitted).

4. Citing new structure in support of structuralobviousness.

If, in support of an obviousness rejection based onclose structural similarity (see MPEP § 2144.09),the examiner’s answer relies on a different structurethan the one on which the examiner previouslyrelied, then the rejection should be designated as anew ground of rejection. For example, in In reWiechert, 370 F.2d 927, 152 USPQ 247 (CCPA1967), the examiner rejected claims to a chemicalcomposition under 35 U.S.C. 103 based on thecomposition’s structural similarity to a prior artcompound disclosed in a reference. The Boardaffirmed the rejection under 35 U.S.C. 103 over thatsame reference, but did so based on a differentcompound than the one the examiner cited. The courtheld that the Board’s decision constituted a newground of rejection, stating, “Under suchcircumstances, we conclude that when a rejection isfactually based on an entirely different portion of anexisting reference the appellant should be affordedan opportunity to make a showing of unobviousnessvis-a-vis such portion of the reference.” Wiechert,370 F.2d at 933, 152 USPQ at 252.

5. Pointing to a different portion of the claimto maintain a “new matter” rejection.

If, in support of a claim rejection under 35 U.S.C.112 based on new matter (see MPEP § 2163.06), adifferent feature or aspect of the rejected claim isbelieved to constitute new matter, then the rejectionshould be designated as a new ground of rejection.For example, in In re Waymouth, 486 F.2d 1058,179 USPQ 627 (CCPA 1973), the claims includedthe limitation “said sodium iodide * * * present inamount of at least 0.17 mg./cc. of said arc tubevolume.” The examiner’s rejection stated that theclaimed “sodium iodide” constituted new matterbecause the specification was alleged only to disclose“sodium.” The Board affirmed the rejection, but didso on a “wholly different basis,” namely, that thespecification failed to disclose the claimed “0.17mg./cc.” volume limitation. Waymouth, 486 F.2dat 1060, 179 USPQ at 629. The court held that theBoard’s rationale constituted a new ground of

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rejection, “necessitating different responses byappellants.” Id. at 1061, 179 USPQ at 629.

II. SITUATIONS THAT ARE NOT CONSIDEREDNEW GROUNDS OF REJECTION

There is no new ground of rejection when the basicthrust of the rejection remains the same such that anappellant has been given a fair opportunity to reactto the rejection. See In re Kronig, 539 F.2d 1300,1302-03, 190 USPQ 425, 426-27 (CCPA 1976).Where the statutory basis for the rejection remainsthe same, and the evidence relied upon in supportof the rejection remains the same, a change in thediscussion of, or rationale in support of, the rejectiondoes not necessarily constitute a new ground ofrejection. Id. at 1303, 190 USPQ at 427 (relianceupon fewer references in affirming a rejection under35 U.S.C. 103 does not constitute a new ground ofrejection).

In addition, if:

(A) an amendment under 37 CFR 1.116 [or41.33] proposes to add or amend one or more claims;

(B) appellant was advised (through an advisoryaction) that the amendment would be entered forpurposes of appeal; and

(C) the advisory action indicates whichindividual rejection(s) set forth in the action fromwhich appeal has been taken would be used to rejectthe added or amended claims, then

(1) the appeal brief must address the rejection(s)of the added or amended claim(s) and

(2) the examiner’s answer may include therejection(s) of the added or amended claims. Suchrejection(s) made in the examiner’s answer wouldnot be considered as a new ground of rejection.

The filing of such an amendment representsappellant’s consent to proceed with the appealprocess. For example, when an amendment under37 CFR 1.116 or 41.33 cancels a claim (the“canceled claim”) and incorporates its limitationsinto the claim upon which it depends or rewrites theclaim as a new independent claim (the “appealedclaim”), the appealed claim contains the limitationsof the canceled claim (i.e., the only differencebetween the appealed claim and the canceled claimis the claim number). In such situations, the appellant

has been given a fair opportunity to react to theground of rejection (albeit to a claim having adifferent claim number). Thus, such a rejection doesnot constitute a “new ground of rejection” withinthe meaning of 37 CFR 41.39 .

The phrase “individual rejections” addressessituations such as the following: the action containsa rejection of claim 1 under 35 U.S.C. 102 on thebasis of Reference A, a rejection of claim 2 (whichdepends upon claim 1) under 35 U.S.C. 103 on thebasis of Reference A in view of Reference B and arejection of claim 3 (which depends upon claim 1)under 35 U.S.C. 103 on the basis of Reference A inview of Reference C. In this situation, the actioncontains the following “individual rejections”: (1)35 U.S.C. 102 on the basis of Reference A; (2) 35U.S.C. 103 on the basis of Reference A in view ofReference B; and (3) 35 U.S.C. 103 on the basis ofReference A in view of Reference C. The action,however, does not contain any rejection on the basisof A in view of B and C. If an amendment under 37CFR 1.116 or 41.33 proposes to combine thelimitations of claims 1 and 2 together into amendedclaim 1 and cancels claim 2, a rejection of amendedclaim 1 under 35 U.S.C. 103 on the basis ofReference A in view of Reference B would beappropriate and would not be considered a newground of rejection within the meaning of 37 CFR41.39, provided the applicant was advised that thisrejection would be applied to amended claim 1 inan advisory action. Furthermore, since claim 3(which depends upon claim 1) would include thelimitations of the original claims 1, 2, and 3, arejection of amended claim 3 (amended by theamendment to original claim 1) under 35 U.S.C. 103on the basis of Reference A in view of Reference Band Reference C may be appropriate and would notbe considered a new ground of rejection within themeaning of 37 CFR 41.39, provided applicant wasadvised that this rejection would be applied toamended claim 3 in the advisory action. Of course,as amended claim 3 includes the limitations of theoriginal claims 1, 2, and 3, amended claim 3 is anewly proposed claim in the application raising anew issue (i.e., a new ground of rejection), and suchan amendment under 37 CFR 1.116 or 41.33 mayproperly be refused entry as raising a new issue.

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§ 1207.03(a)APPEAL

It must be emphasized that 37 CFR 41.39(a)(2) doesnot change the existing practice with respect toamendment after final rejection practice (37 CFR1.116). The fact that 37 CFR 41.39(a)(2) wouldauthorize the rejection in an examiner’s answer ofa claim sought to be added or amended in anamendment under 37 CFR 1.116 or 41.33 has noeffect on whether the amendment under 37 CFR1.116 or 41.33 is entitled to entry. The provisionsof 37 CFR 1.116 or 41.33 control whether anamendment under 37 CFR 1.116 or 41.33 is entitledto entry; the provisions of 37 CFR 41.39(a)(2)permits a new ground of rejection to be included inan answer against a claim added or amended in anamendment under 37 CFR 1.116 or 41.33.

Where a newly cited reference is added merely asevidence of the prior statement made by theexaminer as to what is “well-known” in the art whichwas challenged for the first time in the appeal brief,the citation of the reference in the examiner’s answerwould not ordinarily constitute a new ground ofrejection within the meaning of 37 CFR 41.39(a)(2).See also MPEP § 2144.03.

Factual Situations That Do Not Constitute a NewGround of Rejection

1. Citing a different portion of a reference toelaborate upon that which has been cited previously.

If the examiner’s answer cites a different portion ofan applied reference which goes no farther than, andmerely elaborates upon, what is taught in thepreviously cited portion of that reference, then therejection does not constitute a new ground ofrejection. For example, in In re DBC, 545 F.3d1373, 89 USPQ2d 1123 (Fed. Cir. 2008), theexaminer rejected the claims under 35 U.S.C. 103over a combination of references, including theEnglish translation of the abstract for a Japanesepatent. The examiner cited the English abstract fortwo claim limitations: (1) Mangosteen rind, and (2)fruit or vegetable juice. The Board affirmed therejection under 35 U.S.C. 103 over the samereferences, but instead of citing the abstract, theBoard cited an Example on page 16 of the Englishtranslation of the Japanese reference, which was notbefore the examiner. DBC, 545 F.3d at 1381, 89

USPQ2d at 1129. Importantly, the Board cited theExample for the same two claim limitations taughtin the abstract, and the Example merely elaboratedupon the medicinal qualities of the mangosteen rind(which medicinal qualities were not claimed) andtaught orange juice as the preferred fruit juice (whilethe claim merely recited fruit or vegetable juice).Hence, the Example merely provided a more specificdisclosure of the same two generic limitations thatwere fully taught by the abstract. The court held thatthis did not constitute a new ground of rejectionbecause “the example in the translation goes nofarther than, and merely elaborates upon, what istaught by the abstract.” DBC, 545 F.3d at 1382 n.5,89 USPQ2d at 1130 n.5.

2. Changing the statutory basis of rejection from35 U.S.C. 103 to 35 U.S.C. 102, but relying on thesame teachings.

If the examiner’s answer changes the statutory basisof the rejection from 35 U.S.C. 103 to 35 U.S.C.102, and relies on the same teachings of theremaining reference to support the 35 U.S.C. 102rejection, then the rejection does not constitute anew ground of rejection. For example, in In re May,574 F.2d 1082, 197 USPQ 601 (CCPA 1978), aclaim directed to a genus of chemical compoundswas rejected under 35 U.S.C. 103 over a combinationof references. The primary reference disclosed aspecies that fell within the claimed genus. Both theexaminer and the Board cited the species to rejectthe claim under 35 U.S.C. 103. The court affirmedthe rejection, but did so under 35 U.S.C. 102, statingthat “lack of novelty is the epitome ofobviousness.” May, 574 F.2d at 1089, 197 USPQ at607 (citing In re Pearson, 494 F.2d 1399, 1402, 181USPQ 641, 644 (CCPA 1974)). Because the courtrelied on the same prior art species as both theexaminer and Board, the court held that this did notconstitute a new ground of rejection. May, 574 F.2dat 1089, 197 USPQ at 607.

3. Relying on fewer than all references insupport of a 35 U.S.C. 103 rejection, but relying onthe same teachings.

If the examiner’s answer removes one or morereferences from the statement of rejection under 35U.S.C. 103, and relies on the same teachings of theremaining references to support the 35 U.S.C. 103rejection, then the rejection does not constitute a

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new ground of rejection. For example, in In reKronig, 539 F.2d 1300, 1302, 190 USPQ 425, 427(CCPA 1976), the examiner rejected the claimsunder 35 U.S.C. 103 over four references. The Boardaffirmed the rejection under 35 U.S.C. 103, butlimited its discussion to three of the referencesapplied by the examiner. Id. The Board relied uponthe references for the same teachings as did theexaminer. The court held that this did not constitutea new ground of rejection. Kronig, 539 F.2d at 1303,190 USPQ at 427 (“Having compared the rationaleof the rejection advanced by the examiner and theboard on this record, we are convinced that the basicthrust of the rejection at the examiner and board levelwas the same.”). See also In re Bush, 296 F.2d 491,495–96, 131 USPQ 263, 266-67 (CCPA 1961)(Examiner rejected claims 28 and 29 under 35 U.S.C.103 based upon “Whitney in view of Harth;” Boarddid not enter new ground of rejection by relying onlyon Whitney).

4. Changing the order of references in thestatement of rejection, but relying on the sameteachings of those references.

If the examiner’s answer changes the order ofreferences in the statement of rejection under 35U.S.C. 103, and relies on the same teachings of thosereferences to support the 35 U.S.C. 103 rejection,then the rejection does not constitute a new groundof rejection. For example, in In re Cowles, 156 F.2d551, 552, 70 USPQ 419, 420 (CCPA 1946), theexaminer rejected the claims under 35 U.S.C. 103over “Foret in view of either Preleuthner orSeyfried.” The Board affirmed the rejection under35 U.S.C. 103, but styled the statement of rejectionas to some of the rejected claims as “Seyfried inview of Foret,” but relied on the same teachings ofSeyfried and Foret on which the examiner relied.The court held that this did not constitute a newground of rejection. Cowles, 156 F.2d at 554, 70USPQ at 421-22. See also In re Krammes, 314 F.2d813, 816– 17, 137 USPQ 60, 63 (CCPA 1963)(holding that a different “order of combining thereferences” did not constitute a new ground ofrejection because each reference was cited for the“same teaching” previously cited).

5. Considering, in order to respond toapplicant’s arguments, other portions of a referencesubmitted by the applicant.

If an applicant submits a new reference to argue, forexample, that the prior art “teaches away” from theclaimed invention (see MPEP § 2145), and theexaminer’s answer points to portions of that samereference to counter the argument, then the rejectiondoes not constitute a new ground of rejection. In Inre Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir.1986), the claimed invention was directed to aprocess for sulfonating diphenyl sulfone at atemperature above 127° C. Id. at 1039, 228 USPQat 685. The examiner rejected the claims under 35U.S.C. 103 over a single reference. The applicantsubmitted three additional references as evidencethat the prior art teaches away from performingsulfonation above 127° C, citing portions of thosereferences which taught lower temperature reactions.The Board affirmed the rejection, finding theapplicant’s evidence unpersuasive. On appeal, theSolicitor responded to the applicant’s “teachingaway” argument by pointing to other portions ofthose same references which, contrary to applicant’sargument, disclosed reactions occurring above 127°C. The court held that this did not constitute a newground of rejection because “[t]he Solicitor has doneno more than search the references of record fordisclosures pertinent to the same arguments forwhich [applicant] cited the references.” Hedges, 783F.2d at 1039–40, 228 USPQ at 686.

1207.03(b) Petition to Designate a NewGround of Rejection and to ReopenProsecution [R-11.2013]

37 CFR 41.40 Tolling of time period to file a reply brief.

(a) Timing. Any request to seek review of the primaryexaminer's failure to designate a rejection as a new ground ofrejection in an examiner's answer must be by way of a petitionto the Director under § 1.181 of this title filed within two monthsfrom the entry of the examiner's answer and before the filing ofany reply brief. Failure of appellant to timely file such a petitionwill constitute a waiver of any arguments that a rejection mustbe designated as a new ground of rejection.

(b) Petition granted and prosecution reopened. A decisiongranting a petition under § 1.181 to designate a new ground ofrejection in an examiner's answer will provide a two-month timeperiod in which appellant must file a reply under § 1.111 of thistitle to reopen the prosecution before the primary examiner. Onfailure to timely file a reply under § 1.111, the appeal will standdismissed.

(c) Petition not granted and appeal maintained. A decisionrefusing to grant a petition under § 1.181 of this title to designatea new ground of rejection in an examiner's answer will provide

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§ 1207.03(b)APPEAL

a two-month time period in which appellant may file only asingle reply brief under § 41.41.

(d) Withdrawal of petition and appeal maintained. If areply brief under § 41.41 is filed within two months from thedate of the examiner's answer and on or after the filing of apetition under § 1.181 to designate a new ground of rejectionin an examiner's answer, but before a decision on the petition,the reply brief will be treated as a request to withdraw thepetition and to maintain the appeal.

(e) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiod set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

Appellant cannot request to reopen prosecutionpursuant to 37 CFR 41.39(b) if the examiner’sanswer does not have a rejection that is designatedas a new ground of rejection.

37 CFR 41.40 sets forth the exclusive procedure foran appellant to request review of the primaryexaminer’s failure to designate a rejection as a newground of rejection via a petition to the Directorunder 37 CFR 1.181. This procedure should be usedif an appellant feels an answer includes a new groundof rejection that has not been designated as such andwishes to reopen prosecution so that newamendments or evidence may be submitted inresponse to the rejection. However, if appellantwishes to submit only arguments, the filing of apetition under 37 CFR 1.181 would not be necessarybecause appellant may submit the arguments in areply brief. Any such petition under 37 CFR 1.181must be filed within two months from the entry ofthe examiner’s answer and prior to the filing of areply brief.

The authority to decide petitions under 37 CFR 41.40is delegated to the TC Director or designee. Adecision granting a petition under 37 CFR 41.40 willprovide a two-month time period in which appellantmust file a reply under 37 CFR 1.111 to avoid thedismissal of the appeal. No corrected examiner’sanswer will be provided.

If the petition is granted, appellant may presentamendment, evidence, and/or arguments in the replyunder 37 CFR 1.111 that are directed to otherrejections that are not new grounds of rejection. Anafter-final amendment or evidence that waspreviously refused entry is not automatically entered.

Appellant may include such amendment or evidencein the reply. Upon filing of the reply, the prosecutionwill be reopened and the examiner will consider thereply. The examiner may make the next Office actionfinal (if appropriate). See MPEP § 706.07(a).

On the other hand, if the Office refuses to grant apetition under 37 CFR 1.181 requesting designationas a new ground of rejection under 37 CFR 41.40,the appeal will be maintained. A decision refusingto grant a petition will provide a two-month timeperiod in which appellant may file only a single replybrief under 37 CFR 41.40. The jurisdiction will passto the Board upon the filing of a reply brief or theexpiration of the two-month time period, whicheveris earlier. See 37 CFR 41.35(a).

Any reply brief that is filed within two months fromthe date of the examiner’s answer, but before adecision on the petition, will be treated as a requestto withdraw the petition and to maintain the appeal.No decision on the petition will be provided.Jurisdiction will pass to the Board upon the filing ofthe reply brief. See 37 CFR 41.35(a).

The time periods set forth in 37 CFR 41.40 are notextendable under 37 CFR 1.136(a), but areextendable under 37 CFR 1.136(b) for patentapplications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.40(e).

1207.03(c) Appellant's Reply to NewGrounds of Rejection [R-08.2017]

37 CFR 41.39 Examiner’s answer.*****

(b) Appellant's response to new ground of rejection. If anexaminer’s answer contains a rejection designated as a newground of rejection, appellant must within two months from thedate of the examiner’s answer exercise one of the following twooptions to avoid sua sponte dismissal of the appeal as to theclaims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution bereopened before the primary examiner by filing a reply under§ 1.111 of this title with or without amendment or submissionof affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) orother Evidence. Any amendment or submission of affidavits orother Evidence must be relevant to the new ground of rejection.A request that complies with this paragraph will be entered andthe application or the patent under ex parte reexamination willbe reconsidered by the examiner under the provisions of § 1.112of this title. Any request that prosecution be reopened under thisparagraph will be treated as a request to withdraw the appeal.

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(2) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as set forth in § 41.41. Sucha reply brief must address as set forth in § 41.37(c)(1)(iv) eachnew ground of rejection and should follow the otherrequirements of a brief as set forth in § 41.37(c). A reply briefmay not be accompanied by any amendment, affidavit (§§ 1.130,1.131 or 1.132 of this of this title) or other Evidence. If a replybrief filed pursuant to this section is accompanied by anyamendment, affidavit or other Evidence, it shall be treated as arequest that prosecution be reopened before the primaryexaminer under paragraph (b)(1) of this section.

*****

The provisions of 37 CFR 41.39(b) apply only torejections that are designated as new grounds ofrejection in the examiner's answer. If appellantbelieves there is an undesignated new ground ofrejection, review is by way of the procedureestablished in 37 CFR 41.40.

The two month time period for reply is notextendable under 37 CFR 1.136(a), but is extendableunder 37 CFR 1.136(b) for patent applications and37 CFR 1.550(c) for ex parte reexaminationproceedings. See 37 CFR 41.39(c).

I. REQUEST THAT PROSECUTION BEREOPENED BY FILING A REPLY

If appellant requests that prosecution be reopened,the appellant must file a reply that addresses eachnew ground of rejection set forth in the examiner’sanswer in compliance with 37 CFR 1.111 within twomonths from the mailing of the examiner’s answer.The reply may also include amendments, evidence,and/or arguments directed to claims not subject tothe new ground of rejection or other rejections. Ifthere is an after-final amendment (or affidavit orother evidence) that was not entered, appellant mayinclude such amendment (or affidavit or otherevidence) in the reply to the examiner’s answer.

If the reply is not fully responsive to the new groundof rejection, but the reply is bona fide, the examinershould provide a time period for appellant tocomplete the reply pursuant to 37 CFR 1.135(c). SeeMPEP § 714.03. If the reply is not bona fide (e.g.,does not address the new ground of rejection) andthe two-month time period has expired, examinermust sua sponte dismiss the appeal. See subsection“III. Failure to Reply to a New Ground of Rejection”below.

Once appellant files a reply in compliance with37 CFR 1.111 in response to an examiner’s answerthat contains a new ground of rejection, the examinermust reopen prosecution by entering and consideringthe reply. The examiner may make the next Officeaction final unless the examiner introduces a newground of rejection that is neither necessitated bythe applicant’s amendment of the claims nor basedon information submitted in an informationdisclosure statement filed during the period set forthin 37 CFR 1.97(c) with the fee set forth in 37 CFR1.17(p). See MPEP § 706.07(a).

II. REQUEST THAT THE APPEAL BEMAINTAINED BY FILING A REPLY BRIEF

If appellant requests that the appeal be maintained,the appellant must file a reply brief that addresseseach new ground of rejection set forth in the answerin compliance with 37 CFR 41.37(c)(1)(vii) withintwo months from the mailing of the answer. Thereply brief should include the following items, witheach item starting on a separate page, so as to followthe other requirements of a brief as set forth in 37CFR 41.37(c):

(1) Identification page setting forth theappellant’s name(s), the application number, thefiling date of the application, the title of theinvention, the name of the examiner, the art unit ofthe examiner and the title of the paper (i.e., ReplyBrief);

(2) Argument page(s).

The reply brief must also be in compliance withrequirements set forth in 37 CFR 41.41, e.g., itcannot include any new amendment or affidavit. Ifthe reply brief is accompanied by any amendmentor evidence, it will be treated as a request thatprosecution be reopened under 37 CFR 41.39(b)(1)assuming the answer contained a rejection designatedas a new ground.

The reply brief may include new argumentsresponsive to the designated new grounds ofrejection. Any argument raised in the reply briefwhich was not raised in the appeal brief, or is notresponsive to an argument raised in the examiner’sanswer, including any designated new ground of

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§ 1207.03(c)APPEAL

rejection, will not be considered by the Board forpurposes of the appeal, unless good cause is shown.

Unless the Board remands the appeal under 37 CFR41.50(a)(1) for further action by the examiner, theexaminer may not answer the reply brief. Jurisdictionpasses to the Board immediately on filing of a replybrief or expiration of the period to do so.

III. FAILURE TO REPLY TO A NEW GROUNDOF REJECTION

As specified in 37 CFR 41.35, jurisdiction over theproceeding passes to the Board on filing of a replybrief or the expiration of time to file a reply brief.Therefore, examiners will not normally makedeterminations as to the sufficiency of a reply to anew ground of rejection.

If appellant fails to timely file a reply under 37 CFR1.111 or a reply brief in response to an examiner’sanswer that contains a new ground of rejection, theappeal will be sua sponte dismissed as to the claimssubject to the new ground of rejection. If all of theclaims under appeal are subject to the new groundof rejection, the entire appeal will be dismissed.

If the appeal is dismissed by the Board, the examinershould follow the procedure set forth in MPEP §1215.

1207.04 Reopening of Prosecution AfterAppeal [R-11.2013]

The examiner may, with approval from thesupervisory patent examiner, reopen prosecution toenter a new ground of rejection in response toappellant’s brief. A new ground as used in thissubsection includes both a new ground that wouldnot be proper in an examiner's answer as describedin MPEP § 1207.03, subsection II and a new groundthat would be proper (with appropriate supervisoryapproval) as described in MPEP § 1207.03,subsection III. In deciding whether to reopenprosecution or to add a new ground of rejection toan examiner's answer where proper under MPEP §1207.03 et seq., examiners and their supervisorsshould consider the degree to which the rejectionpreviously of record is being changed, any previousreopenings after appeal brief, and the overall

pendency of the application. The Office actioncontaining a new ground of rejection may be madefinal if the new ground of rejection was (A)necessitated by amendment, or (B) based oninformation presented in an information disclosurestatement under 37 CFR 1.97(c) where no statementunder 37 CFR 1.97(e) was filed. See MPEP §706.07(a). Ordinarily any after final amendment oraffidavit or other evidence that was not enteredbefore must be entered and considered on the meritsas part of the action reopening prosecution. Wheremore than one after final amendments that conflictwith each other were filed, e.g., the same claim isreplaced by more than one amendment with newproposed claims of differing scope, than the firstamendment should be entered and the subsequentamendments should not be entered.

Form paragraph 12.239 may be used when reopeningprosecution:

¶ 12.239 Reopening of Prosecution After Appeal Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBYREOPENED. [3] set forth below.

To avoid abandonment of the application, appellant mustexercise one of the following two options:

(1) file a reply under 37 CFR 1.111 (if this Office action isnon-final) or a reply under 37 CFR 1.113 (if this Office actionis final); or,

(2) initiate a new appeal by filing a notice of appeal under 37CFR 41.31 followed by an appeal brief under 37 CFR 41.37.The previously paid notice of appeal fee and appeal brief feecan be applied to the new appeal. If, however, the appeal feesset forth in 37 CFR 41.20 have been increased since they werepreviously paid, then appellant must pay the difference betweenthe increased fees and the amount previously paid.

A Supervisory Patent Examiner (SPE) has approved of reopeningprosecution by signing below:

[4]

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert --appeal brief-- or --amended appealbrief--.

3. In bracket 2, insert the date on which the brief was filed.

4. In bracket 3, insert --A new ground of rejection is-- or--New grounds of rejection are--.

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5. In bracket 4, insert the SPE’s signature. Approval of theSPE is required to reopen prosecution after an appeal. See MPEP§§ 1002.02(d) and 1207.04.

6. Use this form paragraph to reopen prosecution in order tomake a new ground of rejection of claims. The Office actionfollowing a reopening of prosecution may be made final if allnew grounds of rejection were either (A) necessitated byamendment or (B) based on information presented in aninformation disclosure statement under 37 CFR 1.97(c) whereno statement under 37 CFR 1.97(e) was filed. See MPEP §706.07(a).

After reopening of prosecution, appellant mustexercise one of the following options to avoidabandonment of the application:

(A) file a reply under 37 CFR 1.111, if the Officeaction is non-final;

(B) file a reply under 37 CFR 1.113, if the Officeaction is final; or

(C) initiate a new appeal by filing a new noticeof appeal under 37 CFR 41.31.

If appellant elects to continue prosecution andprosecution was reopened prior to a decision on themerits by the Board, the fee paid for the notice ofappeal, appeal brief (if applicable), forwarding anappeal to the Board (if applicable) and request fororal hearing (if applicable) will be applied to a laterappeal on the same application. If, however, theappeal fees set forth in 37 CFR 41.20 have increasedsince they were previously paid, applicant must paythe difference between the increased fees and theamount previously paid. If appellant elects to initiatea new appeal by filing a notice of appeal, appellantmust file a complete new brief in compliance with37 CFR 41.37 within two months from the filing ofthe new notice of appeal. See MPEP § 1204.01 formore information on reinstatement of an appeal.

1207.05 Substitute Examiner’s Answer[R-11.2013]

After receipt of a reply brief in compliance with 37CFR 41.41, jurisdiction over the appeal passes tothe Board. Normally, the examiner does not need toacknowledge the reply brief and will not have anopportunity for further comment prior to a decisionby the Board. However, the Board may remand theappeal to the examiner to furnish a substituteexaminer’s answer responsive to the remand.

37 CFR 41.50 Decisions and other actions by the Board.

(a)(1) Affirmance and reversal. The Board, in itsdecision, may affirm or reverse the decision of the examiner inwhole or in part on the grounds and on the claims specified bythe examiner. The affirmance of the rejection of a claim on anyof the grounds specified constitutes a general affirmance of thedecision of the examiner on that claim, except as to any groundspecifically reversed. The Board may also remand an applicationto the examiner.

(2) If a substitute examiner's answer is written inresponse to a remand by the Board for further consideration ofa rejection pursuant to paragraph (a)(1) of this section, theappellant must within two months from the date of the substituteexaminer's answer exercise one of the following two options toavoid sua sponte dismissal of the appeal as to the claims subjectto the rejection for which the Board has remanded theproceeding:

(i) Reopen prosecution. Request that prosecutionbe reopened before the examiner by filing a reply under § 1.111of this title with or without amendment or submission ofaffidavits (§§ 1.130, 1.131 or 1.132 of this title) or otherEvidence. Any amendment or submission of affidavits or otherEvidence must be relevant to the issues set forth in the remandor raised in the substitute examiner's answer. A request thatcomplies with this paragraph (a) will be entered and theapplication or the patent under ex parte reexamination will bereconsidered by the examiner under the provisions of § 1.112of this title. Any request that prosecution be reopened under thisparagraph will be treated as a request to withdraw the appeal.

(ii) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as provided in § 41.41. If sucha reply brief is accompanied by any amendment, affidavit orother Evidence, it shall be treated as a request that prosecutionbe reopened before the examiner under paragraph (a)(2)(i) ofthis section.

*****

The examiner may only furnish a substituteexaminer’s answer in response to a remand.

In response to a substitute examiner’s answer thatis written in response to a remand by the Board forfurther consideration of a rejection, appellant musteither file: (1) a reply under 37 CFR 1.111 to requestthat prosecution be reopened; or (2) a reply brief torequest that the appeal be maintained, within twomonths from the mailing of the substitute examiner’sanswer, to avoid sua sponte dismissal of the appealas to the claims subject to the rejection for whichthe Board has remanded the proceeding. Examinermay include a new ground of rejection in thesubstitute examiner’s answer responding to a remandby the Board for further consideration of a rejection.See MPEP § 1207.03.

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§ 1207.05APPEAL

I. SUBSTITUTE EXAMINER’S ANSWERRESPONDING TO A REMAND FOR FURTHERCONSIDERATION OF REJECTION

The examiner may provide a substitute examiner’sanswer in response to a remand by the Board forfurther consideration of a rejection under 37 CFR41.50(a). Appellant must respond to such substituteexaminer’s answer and has the option to request thatprosecution be reopened. A substitute examiner’sanswer written in response to a remand by the Boardfor further consideration of a rejection pursuant to37 CFR 41.50(a)(2) may set forth a new ground ofrejection. Any new ground of rejection made in sucha substitute examiner’s answer must comply withthe requirements set forth in MPEP § 1207.03. Theexaminer may use form paragraph 12.285 inpreparing the substitute examiner’s answerresponding a remand by the Board for furtherconsideration of a rejection.

¶ 12.285 Substitute Examiner’s Answer - On Remand FORFURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the PatentTrial and Appeal Board on [1] for further consideration of arejection, a substitute Examiner’s Answer under 37 CFR41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date ofthe substitute examiner’s answer exercise one of the followingtwo options to avoid sua sponte dismissal of the appeal as to theclaims subject to the rejection for which the Board has remandedthe proceeding:

(1) Reopen prosecution. Request that prosecution be reopenedbefore the examiner by filing a reply under 37 CFR 1.111 withor without amendment, affidavit, or other evidence. Anyamendment, affidavit, or other evidence must be relevant to theissues set forth in the remand or raised in the substituteexaminer’s answer. Any request that prosecution be reopenedwill be treated as a request to withdraw the appeal. See 37 CFR41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained byfiling a reply brief as set forth in 37 CFR 41.41. If such a replybrief is accompanied by any amendment, affidavit or otherevidence, it shall be treated as a request that prosecution bereopened under 37 CFR 41.50(a)(2)(i). See 37 CFR41.50(a)(2)(ii) .

Extensions of time under 37 CFR 1.136(a) are not applicableto the TWO MONTH time period set forth above. See 37 CFR1.136(b) for extensions of time to reply for patent applicationsand 37 CFR 1.550(c) for extensions of time to reply for ex partereexamination proceedings.

A Technology Center Director or designee has approvedthis substitute examiner’s answer by signing below:

[3]

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the date of the remand.

3. In bracket 2, provide reasons supporting the rejections setforth in the substitute Examiner’s Answer.

4. In bracket 3, insert the TC Director’s or designee’ssignature. A TC Director or designee must approve everysubstitute examiner’s answer.

A. Appellant’s Reply

If a substitute examiner’s answer is written inresponse to a remand by the Board for furtherconsideration of a rejection pursuant to 37 CFR41.50(a)(2), the appellant must, within two monthsof the date of the substitute examiner's answer,exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claimssubject to the rejection for which the Board hasremanded the proceeding:

(i) Reopen prosecution. Request thatprosecution be reopened before the examiner byfiling a reply under 37 CFR 1.111 with or withoutamendment or submission of affidavits (37 CFR1.130, 1.131 or 1.132) or other evidence. Anyamendment or submission of affidavits or otherevidence must be relevant to the issues set forth inthe remand or raised in the substitute examiner’sanswer. A request that complies with 37 CFR41.50(a)(2)(i) will be entered and the application orthe patent under ex parte reexamination will bereconsidered by the examiner under the provisionsof 37 CFR 1.112. Any request that prosecution bereopened under 37 CFR 41.50(a)(2)(i) will be treatedas a request to withdraw the appeal.

(ii) Maintain appeal. Request that the appealbe maintained by filing a reply brief as provided in37 CFR 41.41. If such a reply brief is accompaniedby any amendment, affidavit or other evidence, itshall be treated as a request that prosecution bereopened before the examiner under 37 CFR41.50(a)(2)(i).

The two month time period for reply is notextendable under 37 CFR 1.136(a), but is extendable

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1207.05

under 37 CFR 1.136(b) for patent applications and37 CFR 1.550(c) for ex parte reexaminationproceedings.

1. Request That Prosecution Be Reopened by Filinga Reply

If appellant requests that prosecution be reopened,the appellant must file a reply that addresses eachground of rejection set forth in the substituteexaminer’s answer in compliance with 37 CFR 1.111within two months from the mailing of the substituteexaminer’s answer. The reply may also includeamendments, evidence, and/or arguments directedto claims not subject to the ground of rejection setforth in the substitute examiner's answer or otherrejections. If there is after-final amendment (oraffidavit or other evidence) that was not entered,appellant may include such amendment in the replyto the substitute examiner’s answer.

If the reply is not fully responsive to the ground ofrejection set forth in the substitute examiner’sanswer, but the reply is bona fide, the examinershould provide a time period for appellant tocomplete the reply pursuant to 37 CFR 1.135(c). Ifthe reply is not bona fide (e.g., does not address theground of rejection) and the two-month time periodhas expired, the examiner must sua sponte dismissthe appeal as to the claims subject to the rejectionfor which the Board has remanded the case.

Once appellant files a reply in compliance with37 CFR 1.111 in response to a substitute examiner’sanswer responding to a remand by the Board forfurther consideration of a rejection under 37 CFR41.50(a), the examiner must reopen prosecution byentering and considering the reply. Examiner maymake the next Office action final unless the examinerintroduces a new ground of rejection that is neithernecessitated by the applicant’s amendment of theclaims nor based on information submitted in aninformation disclosure statement filed during theperiod set forth in 37 CFR 1.97(c) with the fee setforth in 37 CFR 1.17(p). See MPEP § 706.07(a).

2. Request That the Appeal Be Maintained by Filinga Reply Brief

If appellant requests that the appeal be maintained,the appellant must file a reply brief to address eachgrounds of rejection set forth in the substituteexaminer’s answer in compliance with 37 CFR41.37(c)(1)(iv) within two months from the mailingof the substitute examiner's answer. The reply briefmust also be in compliance with requirements setforth in 37 CFR 41.41 (e.g., it cannot include anynew amendment or affidavit). If the reply brief isaccompanied by an amendment, affidavit or otherevidence, it will be treated as a request thatprosecution be reopened before the examiner.

B. Failure To Reply to a Substitute Examiner’sAnswer Under 37 CFR 41.50(a)

If appellant fails to timely file a reply under 37 CFR1.111 or a reply brief in response to a substituteexaminer’s answer that was written in response to aremand by the Board for further consideration of arejection under 37 CFR 41.50(a), the appeal will be sua sponte dismissed as to the claims subject to therejection for which the Board has remanded theproceeding. As jurisdiction passes to the Board atthe expiration of time to file a reply brief, the Boardwill prepare and mail the dismissal. If all of theclaims under appeal are subject to the rejection, theentire appeal will be dismissed. The examiner shouldfollow the procedure set forth in MPEP § 1215 afterthe appeal is dismissed. For example, if there is noallowed claim in the application, the applicationwould be abandoned when the two-month timeperiod has expired.

If only some of the claims under appeal are subjectto the rejection, the dismissal of the appeal as tothose claims operates as an authorization to cancelthose claims and the appeal continues as to theremaining claims. The Board will render a decisionin due course.

II. SUBSTITUTE EXAMINER’S ANSWERRESPONDING TO A REMAND THAT IS NOT FORFURTHER CONSIDERATION OF REJECTION

The Director of the USPTO may remand an appealto the examiner. See 37 CFR 41.35(c). The Board

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§ 1207.05APPEAL

may remand an application to the examiner for areason that is not for further consideration of arejection, such as to consider an informationdisclosure statement filed before jurisdiction overthe appeal transerred to the Board under 37 CFR41.35(d), a reply brief that raised new issues thatwere not considered by the examiner, an amendment,or an affidavit. See MPEP § 1211. Consideration ofany Information Disclosure Statement or petitionfiled while the Board possesses jurisdiction over theproceeding will be held in abeyance until the Board’sjurisdiction ends. The examiner may provide asubstitute examiner’s answer in response to theremand. Appellant may respond by filing a replybrief within two months from the mailing of thesubstitute answer. Appellant does not have the optionto request that prosecution be reopened pursuant to37 CFR 41.50(a) unless the remand by the Board isfor further consideration of a rejection under 37 CFR41.50(a).

1208 Reply Briefs and Fee for ForwardingAppeal [R-11.2013]

37 CFR 41.40 Tolling of time period to file a reply brief.

(a) Timing. Any request to seek review of the primaryexaminer’s failure to designate a rejection as a new ground ofrejection in an examiner’s answer must be by way of a petitionto the Director under § 1.181 of this title filed within two monthsfrom the entry of the examiner’s answer and before the filingof any reply brief. Failure of appellant to timely file such apetition will constitute a waiver of any arguments that a rejectionmust be designated as a new ground of rejection.

(b) Petition granted and prosecution reopened. A decisiongranting a petition under § 1.181 to designate a new ground ofrejection in an examiner’s answer will provide a two-monthtime period in which appellant must file a reply under § 1.111of this title to reopen the prosecution before the primaryexaminer. On failure to timely file a reply under § 1.111, theappeal will stand dismissed.

(c) Petition not granted and appeal maintained. A decisionrefusing to grant a petition under § 1.181 of this title to designatea new ground of rejection in an examiner’s answer will providea two-month time period in which appellant may file only asingle reply brief under § 41.41.

(d) Withdrawal of petition and appeal maintained. If areply brief under § 41.41 is filed within two months from thedate of the examiner’s answer and on or after the filing of apetition under § 1.181 to designate a new ground of rejectionin an examiner’s answer, but before a decision on the petition,the reply brief will be treated as a request to withdraw thepetition and to maintain the appeal.

(e) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the time

period set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

37 CFR 41.41 Reply brief.

(a) Timing. Appellant may file only a single reply brief toan examiner's answer within the later of two months from thedate of either the examiner's answer, or a decision refusing togrant a petition under § 1.181 of this title to designate a newground of rejection in an examiner's answer.

(b) Content.

(1) A reply brief shall not include any new ornon-admitted amendment, or any new or non-admitted affidavitor other Evidence. See § 37 CFR 1.116 of this title foramendments, affidavits or other evidence filed after final actionbut before or on the same date of filing an appeal and § 41.33for amendments, affidavits or other Evidence filed after the dateof filing the appeal.

(2) Any argument raised in the reply brief which wasnot raised in the appeal brief, or is not responsive to an argumentraised in the examiner's answer, including any designated newground of rejection, will not be considered by the Board forpurposes of the present appeal, unless good cause is shown.

(c) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiod set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

I. REPLY BRIEF

Under 37 CFR 41.41(a)(1), appellant may file asingle reply brief as a matter of right within the laterof two months from the date of either the examiner’sanswer, or a decision refusing to grant a petitionunder 37 CFR 1.181 to designate a new ground ofrejection in an examiner’s answer. Extensions oftime to file the reply brief may be granted pursuantto 37 CFR 1.136(b) (for patent applications) or1.550(c) (for ex parte reexamination proceedings).Extensions of time under 37 CFR 1.136(a) are notpermitted. Normally, appellant is not required to filea reply brief to respond to an examiner’s answer,and if appellant does not file a reply brief within thetwo month period of time, the application will beforwarded to the Board for decision on the appeal.In response to the following, however, appellant isrequired to file either a reply brief to maintain theappeal or a reply under 37 CFR 1.111 to reopenprosecution:

(A) An examiner’s answer that designates a newground of rejection pursuant to 37 CFR 41.39 (seeMPEP § 1207.03); or

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(B) A substitute examiner’s answer respondingto a remand by the Board for further considerationof a rejection pursuant to 37 CFR 41.50(a) (seeMPEP § 1207.05). Such a substitute examiner’sanswer may contain a new ground of rejection (alsosee MPEP § 1207.03).

If appellant requests that the appeal be maintainedin response to a new ground of rejection made in anexaminer’s answer or a substitute examiner’s answer,the appellant must file a reply brief to address eachnew ground of rejection set forth in the answer incompliance with 37 CFR 41.37(c)(1)(iv) within twomonths from the mailing of the answer. The replybrief should include the following items, with eachitem starting on a separate page, so as to follow theother requirements of a brief as set forth in 37 CFR41.37(c):

(A) Identification page setting forth theappellant’s name(s), the application number, thefiling date of the application, the title of theinvention, the name of the examiner, the art unit ofthe examiner and the title of the paper (i.e., ReplyBrief);

(B) Argument page(s).

New or non-admitted affidavits, and/or otherevidence are not permitted in a reply brief. Any newamendment must be submitted in papers separatefrom the reply brief, and the entry of such papers issubject to the provisions of 37 CFR 41.33. A paperthat contains an amendment is not a reply briefwithin the meaning of 37 CFR 41.41. Such a paperwill not be entitled to entry simply because it ischaracterized as a reply brief.

If a reply brief is filed in response to a substituteexaminer’s answer under 37 CFR 41.50(a) that waswritten in response to a remand by the Board forfurther consideration of a rejection, any reply briefaccompanied by an amendment, affidavit or otherevidence will be treated as a request that prosecutionbe reopened before the examiner. If appellant failsto file a reply brief or a reply under 37 CFR 1.111within two months from the mailing of theexaminer’s answer that contains a new ground ofrejection, or a substitute examiner’s answer under37 CFR 41.50(a), the appeal may be dismissed. SeeMPEP § 1207.03 and § 1207.05.

II. EXAMINER’S RESPONSE TO A REPLY BRIEF

After receipt of a reply brief under 37 CFR 41.41,jurisdiction over the appeal passes to the Board.Normally, the examiner does not need toacknowledge the reply brief and will not have anopportunity for further argument prior to a decisionby the Board. However, the Board may remand theappeal to the examiner to furnish a substituteexaminer’s answer responsive to the remand.

1208.01 Fee for Forwarding an Appeal to theBoard [R-11.2013]

37 CFR 41.45 Appeal forwarding fee

(a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 37CFR 41.20(b)(4) within the later of two months from the dateof either the examiner's answer, or a decision refusing to granta petition under § 1.181 of this chapter to designate a new groundof rejection in an examiner's answer.

(b) Failure to pay appeal forwarding fee. On failure topay the fee set forth in § 37 CFR 41.20(b)(4) within the periodspecified in paragraph (a) of this section, the appeal will standdismissed.

(c) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiod set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

The examiner's answer should provide notice thatthe appeal forwarding fee must be paid within therequisite time period or the appeal will standdismissed. See form paragraphs 12.279 and12.279.01. It is preferable that appellants pay thisfee at the same time any reply brief is filed.

Effective March 19, 2013, the fee for filing an appealbrief in an application or ex parte reexaminationwas reduced to $0 and a new fee was added forforwarding the appeal to the Board after the mailingof an examiner's answer. Failure to pay this appealforwarding fee results in the dismissal of the appeal.In the event that appellant fails to timely pay the fee,the appeal is dismissed by rule and the examinershould proceed as indicated in MPEP § 1215regardless of whether a separate paper is maileddismissing the appeal. The requirement to pay theappeal forwarding fee is waived when the appealbrief fee was paid before March 19, 2013. As longas the waiver is in effect, applicants having paid the

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§ 1208.01APPEAL

appeal brief fee before March 19, 2013 will not berequired to pay the appeal forwarding fee.

The appeal forwarding fee does not apply to interpartes reexamination appeals.

1209 Oral Hearing [R-11.2013]

37 CFR 41.47 Oral hearing.

(a) An oral hearing should be requested only in thosecircumstances in which appellant considers such a hearingnecessary or desirable for a proper presentation of the appeal.An appeal decided on the briefs without an oral hearing willreceive the same consideration by the Board as appeals decidedafter an oral hearing.

(b) If appellant desires an oral hearing, appellant must file,as a separate paper captioned "REQUEST FOR ORALHEARING," a written request for such hearing accompaniedby the fee set forth in § 41.20(b)(3) within two months from thedate of the examiner's answer or on the date of filing of a replybrief, whichever is earlier.

(c) If no request and fee for oral hearing have been timelyfiled by appellant as required by paragraph (b) of this section,the appeal will be assigned for consideration and decision onthe briefs without an oral hearing.

(d) If appellant has complied with all the requirements ofparagraph (b) of this section, a date for the oral hearing will beset, and due notice thereof given to appellant. If an oral hearingis held, an oral argument may be presented by, or on behalf of,the primary examiner if considered desirable by either theprimary examiner or the Board. A hearing will be held as statedin the notice, and oral argument will ordinarily be limited totwenty minutes for appellant and fifteen minutes for the primaryexaminer unless otherwise ordered.

(e)(1) Appellant will argue first and may reserve timefor rebuttal. At the oral hearing, appellant may only rely onEvidence that has been previously entered and considered bythe primary examiner and present argument that has been reliedupon in the brief or reply brief except as permitted by paragraph(e)(2) of this section. The primary examiner may only rely onargument and Evidence relied upon in an answer except aspermitted by paragraph (e)(2) of this section.

(2) Upon a showing of good cause, appellant and/orthe primary examiner may rely on a new argument based upona recent relevant decision of either the Board or a Federal Court.

(f) Notwithstanding the submission of a request for oralhearing complying with this rule, if the Board decides that ahearing is not necessary, the Board will so notify appellant.

(g) Extensions of time under § 1.136(a) of this title forpatent applications are not applicable to the time periods setforth in this section. See § 1.136(b) of this title for extensionsof time to reply for patent applications and § 1.550(c) of thistitle for extensions of time to reply for ex parte reexaminationproceedings.

37 CFR 41.47(b) provides that an appellant whodesires an oral hearing before the Board must requestthe hearing by filing, in a separate paper captioned“REQUEST FOR ORAL HEARING,” a writtenrequest therefor, accompanied by the appropriatefee set forth in 37 CFR 41.20(b)(3), within 2 monthsafter the date of the examiner’s answer or the dateof filing of a reply brief, whichever is earlier. Thistime period ensures that any request for oral hearingis received not later than when jurisdiction over theproceeding passes to the Board (37 CFR 41.35(a)).Form PTO/SB/32 may be used to request an oralhearing. This time period may only be extended byfiling a request under either 37 CFR 1.136(b) or, ifthe appeal involves an ex parte reexaminationproceeding, under 37 CFR 1.550(c).

If the written request for an oral hearing is not filedin a separate paper captioned “REQUEST FORORAL HEARING,” the request is improper and theappeal will be assigned for consideration anddecision on the briefs without an oral hearing.Likewise, if the request is not timely filed oraccompanied by the appropriate fee, the request isimproper and the appeal will be assigned forconsideration and decision on the briefs without anoral hearing.

A notice of hearing, stating the date, the time, andthe docket, is forwarded to the appellant in duecourse. If appellant fails to confirm the hearingwithin the time required in the notice of hearing orthe appellant waives the hearing, the appeal will beremoved from the hearing docket and assigned onbrief in due course. No refund of the fee forrequesting an oral hearing will be made. Similarly,after confirmation, if no appearance is made at thescheduled hearing, the appeal will be decided onbrief. Since failure to notify the Board of waiver ofhearing in advance of the assigned date results in awaste of the Board’s resources, appellant shouldinform the Board of a change in plans at the earliestpossible opportunity. If the Director or the Boarddetermines that a hearing is not necessary (e.g., aDirector-ordered remand to the examiner isnecessary or it is clear that the rejection(s) cannotbe sustained), appellant will be notified.

If appellant has any special request, such as for aparticular date, day of the week, or afternoon vs.

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morning hearing session, this will be taken intoconsideration in setting the hearing, if made knownto the Board in advance, as long as such request doesnot unduly delay a decision in the case and does notplace an undue administrative burden on the Board.

The appellant may also file a request, in a separatepaper addressed to the Clerk of the Board, to presenthis/her arguments via telephone or an audio-videoconnection. The appellant making the request willbe required to bear the cost of the telephone call orthe audio-video connection. Prior to the hearing date,the Board’s IT specialist may contact the appellantmaking an audio-video request to confirm softwarecompatibility.

The appellant may file a request, in a separate paperaddressed to the Clerk of the Board, to use aprojector while presenting his/her arguments (e.g.,for a PowerPoint® presentation). The Office mayprovide a projector for the appellant’s use subject toavailability. The appellant making the request isresponsible for providing his or her own laptop ormobile computer.

If the time set in the notice of hearing conflicts withprior commitments or if subsequent events makeappearance impossible, the hearing may berescheduled on written request, in a separate paperaddressed to the Clerk of the Board. However, inview of the administrative burden involved inrescheduling hearings and the potential delay whichmay result in the issuance of any patent based on theapplication on appeal, postponements arediscouraged and will not be granted in the absenceof convincing reasons in support of the requestedchange.

Normally, 20 minutes are allowed for appellant toexplain his or her position. If appellant believes thatadditional time will be necessary, the appellantshould file a request in a separate paper addressedto the Clerk of the Board well in advance of thehearing. The request for such time will be taken intoconsideration in assigning the hearing date. The finaldecision on whether additional time is to be grantedrests within the discretion of the senior member ofthe panel hearing the case.

At the oral hearing, appellant may only rely onevidence that has been previously entered andconsidered by the primary examiner and presentarguments that have been relied upon in the brief orreply brief. Upon a showing of good cause, appellantand/or the primary examiner may rely on a newargument based upon a recent relevant decision ofeither the Board or a Federal Court.

The Board's current procedure permits members ofthe public to attend oral hearings in appeals ofreexamination proceedings, reissues, and publishedapplications. Members of the public are notpermitted to attend appeals of non-publishedapplications. More information is available athttp://uspto.gov/ip/boards/public_hearing_info.jsp.All parties, including USPTO employees, attendingoral hearings should be particularly mindful of thepublished Hearing Room Protocol/Decorum.Appropriate attire is clothing that would be worn foran important business meeting.

37 CFR 41.47(f) provides that notwithstanding thesubmission of a request for oral hearing, if the Boarddecides that a hearing is not necessary, the Boardwill so notify appellant. Examples as to when itwould be appropriate for the Board to decide that anoral hearing is not necessary include those wherethe Board has become convinced, prior to hearing,that the examiner’s position cannot be sustained orwhere the Director determines that the proceedingmust be remanded to the examiner under 37 CFR41.35(c).

PARTICIPATION BY EXAMINER

If the appellant has requested an oral hearing andthe primary examiner wishes to appear and presentan oral argument before the Board, a request topresent oral argument must be set forth in a separateletter on a form PTOL-90 using form paragraph12.279.03.

¶ 12.279.03 Request to Present Oral Arguments

The examiner requests the opportunity to present arguments atthe oral hearing.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

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§ 1209APPEAL

2. Use this form paragraph only if an oral hearing has beenrequested by appellant and the primary examiner intends topresent an oral argument.

3. This form paragraph must be included as a separate letter ona form PTOL-90.

In those appeals in which an oral hearing has beenconfirmed by the appellant and the primary examinerhas indicated a desire to participate in the oralargument, oral argument will generally only be heldif the appellant actually appears for oral argument.If the appellant fails to make an appearance for oralargument, the hearing typically will be waived, andthe primary examiner will not be given anopportunity to participate unless the panel hearingthe case deems that a presentation by the primaryexaminer would be useful.

After the oral hearing has been confirmed and thedate set as provided in 37 CFR 41.47(d), the primaryexaminer and the examiner’s supervisor should benotified of the date and time of the hearing. In thosecases where the Board requests the presentation ofan oral argument by or on behalf of the primaryexaminer, the Board’s request may, whereappropriate, indicate specific points or questions towhich the argument should be particularly directed.

On the day of the hearing, examiners associated withthe appeal should notify the usher at the Board thatthey are associated with the appeal and that they areattending the hearing. In addition, the primaryexaminer associated with the appeal should indicatewhether they plan to participate in the oral hearing.At the hearing, after the appellant has made his orher presentation, the examiner will be allowed 15minutes to reply as well as to present a statementwhich clearly sets forth his or her position withrespect to the issues and rejections of record.Generally, the primary examiner may rely on onlyargument and evidence relied upon in the examiner’sanswer. The primary examiner may, however, relyon a new argument based upon a recent relevantdecision of either the Board or a Federal Court.Appellant may utilize any allotted time not used inthe initial presentation for rebuttal.

1210 Actions Subsequent to Examiner’sAnswer but Before Board’s Decision[R-11.2013]

I. JURISDICTION OF BOARD

37 CFR 41.35 Jurisdiction over appeal.

(a) Beginning of jurisdiction. Jurisdiction over theproceeding passes to the Board upon the filing of a reply briefunder § 41.41 or the expiration of the time in which to file sucha reply brief, whichever is earlier.

(b) End of jurisdiction. The jurisdiction of the Board endswhen:

(1) The Director or the Board enters a remand order(see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),

(2) The Board enters a final decision (see § 41.2) andjudicial review is sought or the time for seeking judicial reviewhas expired,

(3) An express abandonment which complies with §1.138 of this title is recognized,

(4) A request for continued examination is filed whichcomplies with § 1.114 of this title,

(5) Appellant fails to take any required action under§§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Boardenters an order of dismissal, or

(6) Appellant reopens prosecution pursuant to §41.40(b) or in response to a new ground of rejection entered ina decision of the Board (see § 41.50(b)(1)).

(c) Remand ordered by the Director. Prior to the entry ofa decision on the appeal by the Board (see § 41.50), the Directormay sua sponte order the proceeding remanded to the examiner.

(d) Documents filed during Board's jurisdiction. Exceptfor petitions authorized by this part, consideration of anyinformation disclosure statement or petition filed while the Boardpossesses jurisdiction over the proceeding will be held inabeyance until the Board's jurisdiction ends.

(e) Administrative remands ordered by the Board. If, afterreceipt and review of the proceeding, the Board determines thatthe file is not complete or is not in compliance with therequirements of this subpart, the Board may relinquishjurisdiction to the examiner or take other appropriate action topermit completion of the file.

Jurisdiction over the application passes from theTechnology Centers to the Board at the timespecified in 37 CFR 41.35(b).

Any amendment or other paper relating to the appealfiled thereafter, but prior to the decision of the Board,may be considered by the examiner only in the eventthe case is remanded for that purpose.

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II. ABANDONMENT OF APPEAL: APPLICATIONREFILED OR ABANDONED

To avoid the rendering of decisions by the Board inapplications which appellants have decided toabandon or to refile as continuations, appellantsshould promptly inform the Clerk of the Board inwriting as soon as they have positively decided torefile or to abandon an application containing anappeal awaiting a decision. Failure to exerciseappropriate diligence in this matter may result in theBoard’s refusing an otherwise proper request tovacate its decision.

See MPEP § 1215.01 - § 1215.03 concerning thewithdrawal of appeals.

1211 Remand by Director or Board[R-08.2017]

Both the Director and the Board have the authorityto remand a case to the examiner when necessary.See 37 CFR 41.35(c) and (e), and 37 CFR 41.40(a).As specified by 37 CFR 41.50(e), a remand by theBoard is not appealable (i.e. not final for purposesof judicial review). In any remand, jurisdiction overthe appeal is transferred from the Board back to theexaminer. Following the remand, the examinershould take action consistent with the remand order.In the absence of other guidance in the remand order,the examiner should take an action described inMPEP § 1207.

For example, the Director may remand a case forconsideration of a new ground of rejection pursuantto 37 CFR 41.35(c) where there has been a changein the law that calls for a new ground of rejection tobe entered. Such a remand may require the examinerto prepare a substitute examiner’s answer to enterthe new ground of rejection.

1211.01 Remand by Board for FurtherConsideration of Rejection [R-11.2013]

A substitute examiner’s answer written in responseto a remand by the Board for consideration of arejection pursuant to 37 CFR 41.50(a)(1) may setforth a new ground of rejection. See MPEP §1207.03.

If a substitute examiner’s answer is written inresponse to a remand by the Board for considerationof a rejection pursuant to 37 CFR 41.50(a)(1) (evenwhen there is no new ground of rejection made inthe substitute examiner’s answer), the appellant mustexercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claimssubject to the rejection for which the Board hasremanded the proceeding:

(A) Reopen prosecution. Request thatprosecution be reopened before the examiner byfiling a reply under 37 CFR 1.111 with or withoutamendment or submission of affidavits (37 CFR1.131(a), 37 CFR 1.131(c) or 1.132) or otherevidence. Any amendment or submission ofaffidavits or other evidence must be relevant to theissues set forth in the remand or raised in thesubstitute examiner’s answer. A request thatcomplies with 37 CFR 41.50(a)(2)(i) will be enteredand the application or the patent under ex parte reexamination will be reconsidered by the examinerunder the provisions of 37 CFR 1.112. Any requestthat prosecution be reopened under 37 CFR41.50(a)(2)(i) will be treated as a request to withdrawthe appeal.

(B) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as provided in 37CFR 41.41. If such a reply brief is accompanied byany amendment, affidavit or other evidence, it shallbe treated as a request that prosecution be reopenedbefore the examiner under 37 CFR 41.50(a)(2)(i).

SeeMPEP § 1207.03 for information on new groundsof rejection.

See MPEP § 1207.05 for information on substituteexaminer’s answer and appellant’s response to asubstitute examiner’s answer.

See MPEP § 1208 for information on reply briefs.

The following are two examples of situations wherethere may be a remand by the Board for examineraction that is not for further consideration of arejection:

(A) A remand to consider an InformationDisclosure Statement; and

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§ 1211.01APPEAL

(B) A remand for the examiner to consider areply brief.

37 CFR 41.50(a)(2) does not apply when the remandby the Board is not for further consideration of arejection. The Board will normally indicate in theremand whether 37 CFR 41.50(a)(2)(i) applies.Appellant cannot request that prosecution bereopened under 37 CFR 41.50(a)(2)(i) and is notrequired to reply to a substitute examiner’s answerthat is written in response to a remand that is not forfurther consideration of a rejection.

The following form paragraph may be used inpreparing the substitute examiner’s answer after aremand from the Board:

¶ 12.285 Substitute Examiner’s Answer - On Remand FORFURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the PatentTrial and Appeal Board on [1] for further consideration of arejection, a substitute Examiner’s Answer under 37 CFR41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date ofthe substitute examiner’s answer exercise one of the followingtwo options to avoid sua sponte dismissal of the appeal as to theclaims subject to the rejection for which the Board has remandedthe proceeding:

(1) Reopen prosecution. Request that prosecution be reopenedbefore the examiner by filing a reply under 37 CFR 1.111 withor without amendment, affidavit, or other evidence. Anyamendment, affidavit, or other evidence must be relevant to theissues set forth in the remand or raised in the substituteexaminer’s answer. Any request that prosecution be reopenedwill be treated as a request to withdraw the appeal. See 37 CFR41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained byfiling a reply brief as set forth in 37 CFR 41.41. If such a replybrief is accompanied by any amendment, affidavit or otherevidence, it shall be treated as a request that prosecution bereopened under 37 CFR 41.50(a)(2)(i). See 37 CFR41.50(a)(2)(ii) .

Extensions of time under 37 CFR 1.136(a) are not applicableto the TWO MONTH time period set forth above. See 37 CFR1.136(b) for extensions of time to reply for patent applicationsand 37 CFR 1.550(c) for extensions of time to reply for ex partereexamination proceedings.

A Technology Center Director or designee has approvedthis substitute examiner’s answer by signing below:

[3]

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the date of the remand.

3. In bracket 2, provide reasons supporting the rejections setforth in the substitute Examiner’s Answer.

4. In bracket 3, insert the TC Director’s or designee’ssignature. A TC Director or designee must approve everysubstitute examiner’s answer.

The supervisory patent examiner must approve anyaction in which a remanded application is withdrawnfrom appeal. See MPEP §§ 706.07(e) and 1002.02(d). If the examiner decides to withdraw thefinal rejection and reopen prosecution to enter a newground of rejection, approval from the supervisorypatent examiner is required. See MPEP § 1207.04.

1211.02 Remand To Consider Amendment[R-11.2013]

There is no obligation resting on the Boardto consider new or amended claims submitted whileit has jurisdiction of the appeal. In re Sweet, 136F.2d 722, 58 USPQ 327 (CCPA 1943). However, aproposed amendment filed after the date of filing ofa brief to either cancel claims, where suchcancellation does not affect the scope of any otherpending claim in the proceeding, or to rewritedependent claims into independent form may beremanded for consideration by the examiner. SeeMPEP § 1206.

If the proposed amendment is in effect anabandonment of the appeal, the appeal will normallybe dismissed by the Board.

1211.03 Remand To Consider Affidavits orDeclarations [R-11.2013]

Affidavits or declarations filed with the filing of anotice of appeal but before jurisdiction passes to theBoard (see MPEP § 1206) will be considered forentry only if the appellant makes the necessaryshowing under 37 CFR 1.116(e) as to why they arenecessary and were not earlier presented. Authorityfrom the Board is not necessary to consider suchaffidavits or declarations. Affidavits or declarationsfiled after a final rejection and prior to a notice ofappeal are handled as provided in MPEP §§ 715.09,

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716, and 716.01. If such evidence has not beentreated by the examiner, the Board or the Directormay remand the proceeding to permit the examinerto consider such evidence.

In the case of affidavits or declarations filed afterthe filing of a notice of appeal, but before ajurisdiction passes to the Board under 37 CFR 41.35,the examiner is without authority to consider thesame unless the examiner determines that theaffidavit or other evidence overcomes all rejectionsunder appeal and that a showing of good andsufficient reasons why the affidavit or other evidenceis necessary and was not earlier presented have beenmade. See MPEP § 1206.

It is not the custom of the Board to remand affidavitsor declarations offered in connection with a requestfor rehearing of its decision where no rejection hasbeen made under 37 CFR 41.50(b). Affidavits ordeclarations submitted for this purpose, notremanded to the examiner, are considered only asarguments. In re Martin, 154 F.2d 126, 69 USPQ75 (CCPA 1946).

For remand to the examiner to consider appellant’sresponse relating to a 37 CFR 41.50(b) rejection,see MPEP § 1214.01.

1211.04 Remand by Board for FurtherSearch [R-08.2012]

It should be extremely rare for the Board to remanda case to the examiner for further search. A remandto the examiner extends the total pendency of anapplication and may necessitate an extension of thepatent term under 35 U.S.C. 154(b). See MPEP §2710. When such a remand is necessary, the Boardshould conduct a search (on-line or otherwise) of atleast one subclass and cite art from that subclass todemonstrate the basis on which it concludes that asearch of this area would be material.The art citedneed not be art upon which a rejection can be made.

1212 Board Requires Appellant to AddressMatter [R-08.2017]

37 CFR 41.50 Decisions and other actions by the Board.*****

(d) Request for briefing and information. The Board mayorder appellant to additionally brief any matter that the Boardconsiders to be of assistance in reaching a reasoned decision onthe pending appeal. Appellant will be given a time period withinwhich to respond to such an order. Failure to timely complywith the order may result in the sua sponte dismissal of theappeal.

*****

37 CFR 41.50(d) authorizes the Board to requireappellant to additionally brief any matter that theBoard considers to be of assistance in reaching areasoned decision on the pending appeal. This mayinclude, for example: (A) the applicability ofparticular case law that has not been previouslyidentified as relevant to an issue in the appeal; or(B) the applicability of prior art that has not beenmade of record. However, consideration ofinformation disclosure statements filed while theBoard possesses jurisdiction over the appeal will beheld in abeyance until the Board's jurisdiction ends.See 37 CFR 41.35(d).

The rule further provides that the appellant will begiven a time period within which to respond to therequirement. Extensions of time are only availableunder 37 CFR 1.136(b). Failure to respond withinthe time period set by the Board may result indismissal of the appeal.

The making of a requirement under 37 CFR 41.50(d)is discretionary with the Board. The authoritygranted in 37 CFR 41.50(d) does not affect theBoard’s authority to remand a case to the examinerin a situation where the Board considers action bythe examiner in the first instance to be necessary ordesirable. See MPEP § 1211. Also, after an appellanthas replied to a requirement under 37 CFR 41.50(d),a remand by the Board to the examiner may beappropriate to permit the examiner to respond to theappellant’s response to the Board’s order.

1213 Decision by Board [R-11.2013]

37 CFR 41.50 Decisions and other actions by the Board.

(a)(1) Affirmance and reversal. The Board, in itsdecision, may affirm or reverse the decision of the examiner inwhole or in part on the grounds and on the claims specified bythe examiner. The affirmance of the rejection of a claim on anyof the grounds specified constitutes a general affirmance of thedecision of the examiner on that claim, except as to any groundspecifically reversed. The Board may also remand an applicationto the examiner.

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§ 1213APPEAL

(2) If a substitute examiner's answer is written inresponse to a remand by the Board for further consideration ofa rejection pursuant to paragraph (a)(1) of this section, theappellant must within two months from the date of the substituteexaminer's answer exercise one of the following two options toavoid sua sponte dismissal of the appeal as to the claims subjectto the rejection for which the Board has remanded theproceeding:

(i) Reopen prosecution. Request that prosecutionbe reopened before the examiner by filing a reply under § 1.111of this title with or without amendment or submission ofaffidavits (§§ 1.130, 1.131 or 1.132 of this title) or otherEvidence. Any amendment or submission of affidavits or otherEvidence must be relevant to the issues set forth in the remandor raised in the substitute examiner's answer. A request thatcomplies with this paragraph (a) will be entered and theapplication or the patent under ex parte reexamination will bereconsidered by the examiner under the provisions of § 1.112of this title. Any request that prosecution be reopened under thisparagraph will be treated as a request to withdraw the appeal.

(ii) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as provided in § 41.41. If sucha reply brief is accompanied by any amendment, affidavit orother Evidence, it shall be treated as a request that prosecutionbe reopened before the examiner under paragraph (a)(2)(i) ofthis section.

(b) New ground of rejection. Should the Board haveknowledge of any grounds not involved in the appeal forrejecting any pending claim, it may include in its opinion astatement to that effect with its reasons for so holding, anddesignate such a statement as a new ground of rejection of theclaim. A new ground of rejection pursuant to this paragraphshall not be considered final for judicial review. When the Boardenters such a non-final decision, the appellant, within twomonths from the date of the decision, must exercise one of thefollowing two options with respect to the new ground ofrejection to avoid termination of the appeal as to the rejectedclaims:

(1) Reopen prosecution. Submit an appropriateamendment of the claims so rejected or new Evidence relatingto the claims so rejected, or both, and have the matterreconsidered by the examiner, in which event the prosecutionwill be remanded to the examiner. The new ground of rejectionis binding upon the examiner unless an amendment or newEvidence not previously of Record is made which, in the opinionof the examiner, overcomes the new ground of rejectiondesignated in the decision. Should the examiner reject the claims,appellant may again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding bereheard under § 41.52 by the Board upon the same Record. Therequest for rehearing must address any new ground of rejectionand state with particularity the points believed to have beenmisapprehended or overlooked in entering the new ground ofrejection and also state all other grounds upon which rehearingis sought.

(c) Review of undesignated new ground of rejection. Anyrequest to seek review of a panel's failure to designate a newground of rejection in its decision must be raised by filing arequest for rehearing as set forth in § 41.52. Failure of appellantto timely file such a request for rehearing will constitute a waiver

of any arguments that a decision contains an undesignated newground of rejection.

(d) Request for briefing and information. The Board mayorder appellant to additionally brief any matter that the Boardconsiders to be of assistance in reaching a reasoned decision onthe pending appeal. Appellant will be given a time period withinwhich to respond to such an order. Failure to timely complywith the order may result in the sua sponte dismissal of theappeal.

(e) Remand not final action. Whenever a decision of theBoard includes a remand, that decision shall not be consideredfinal for judicial review. When appropriate, upon conclusion ofproceedings on remand before the examiner, the Board mayenter an order otherwise making its decision final for judicialreview.

(f) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiods set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

After consideration of the Record includingappellant’s briefs and the examiner’s answers, theBoard writes its decision, affirming the examiner inwhole or in part, or reversing the examiner’sdecision, sometimes also setting forth a new groundof rejection.

37 CFR 41.50(e) provides that a decision of theBoard which includes a remand will not beconsidered final for judicial review. The Board,following conclusion of the proceedings before theexaminer, will either adopt its earlier decision asfinal for judicial review or will render a new decisionbased on all appealed claims, as it considersappropriate. In either case, final action by the Boardwill give rise to the alternatives available to anappellant following a decision by the Board.

On occasion, the Board has refused to consider anappeal until after the conclusion of a pending civilaction or appeal to the Court of Appeals for theFederal Circuit involving issues identical with and/orsimilar to those presented in the later appeal. Suchsuspension of action, postponing consideration ofthe appeal until the Board has the benefit of a courtdecision which may be determinative of the issuesinvolved, has been recognized as sound practice. Anappellant is not entitled, after obtaining a finaldecision by the U.S. Patent and Trademark Officeon an issue in a case, to utilize the prolongedpendency of a court proceeding as a means for

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1213

avoiding res judicata while relitigating the same orsubstantially the same issue in another application.

An appellant may petition that the decision bewithheld to permit the refiling of the application atany time prior to the mailing of the decision. Up to30 days may be granted, although the time is usuallylimited as much as possible. The Board will be moreprone to entertain the appellant’s petition where thepetition is filed early, obviating the necessity for anoral hearing or even for the setting of the oral hearingdate. If the case has already been set for oral hearing,the petition should include a request to vacate thehearing date, not to postpone it.

In a situation where a withdrawal of the appeal isfiled on the same day that the decision is mailed, apetition to vacate the decision will be denied.

See MPEP § 1214.01 concerning the procedurefollowing a new ground of rejection by the Boardunder 37 CFR 41.50(b).

A remark by the Board that a certain feature doesnot appear in a claim is not to be taken as a statementthat the claim may be allowed if the feature issupplied by amendment. Ex parte Norlund, 1913C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913). Aremark by the Board shall not be construed byappellant to give appellant authority to amend theclaim.

1213.01 [Reserved]

1213.02 New Grounds of Rejection by Board[R-11.2013]

37 CFR 41.50 Decisions and other actions by the Board.*****

(b) New ground of rejection. Should the Board haveknowledge of any grounds not involved in the appeal forrejecting any pending claim, it may include in its opinion astatement to that effect with its reasons for so holding, anddesignate such a statement as a new ground of rejection of theclaim. A new ground of rejection pursuant to this paragraphshall not be considered final for judicial review. When the Boardenters such a non-final decision, the appellant, within twomonths from the date of the decision, must exercise one of thefollowing two options with respect to the new ground ofrejection to avoid termination of the appeal as to the rejectedclaims:

(1) Reopen prosecution. Submit an appropriateamendment of the claims so rejected or new Evidence relatingto the claims so rejected, or both, and have the matterreconsidered by the examiner, in which event the prosecutionwill be remanded to the examiner. The new ground of rejectionis binding upon the examiner unless an amendment or newEvidence not previously of Record is made which, in the opinionof the examiner, overcomes the new ground of rejectiondesignated in the decision. Should the examiner reject the claims,appellant may again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding bereheard under § 41.52 by the Board upon the same Record. Therequest for rehearing must address any new ground of rejectionand state with particularity the points believed to have beenmisapprehended or overlooked in entering the new ground ofrejection and also state all other grounds upon which rehearingis sought.

*****

(f) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiods set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

Under 37 CFR 41.50(b), the Board may, in itsdecision, make a new rejection of one or more ofany of the claims pending in the case, includingclaims which have been allowed by the examiner.When the Board exercises its authority to make anew ground of rejection it must also designate thatrejection as a new ground of rejection.

The Board’s reversal of a rejection should not beinterpreted as an instruction to the Examiner to allowthe claims so rejected. See MPEP § 1214.04 forfurther discussion of the procedure following areversal of the examiner’s decision. The Board’sprimary role is to review the adverse decision aspresented by the Examiner, and not to conduct itsown separate examination of the claims. Further,since the exercise of authority under 37 CFR41.50(b) is discretionary, no inference should bedrawn from a failure to exercise that discretion.

While the Board is authorized to reject allowedclaims, this authorization is not intended as aninstruction to the Board to examine every allowedclaim in every appealed application. It is, rather,intended to give the Board express authority to actwhen it becomes apparent, during the considerationof rejected claims, that one or more allowed claimsmay be subject to rejection on either the same or on

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§ 1213.02APPEAL

different grounds from those applied against therejected claims.

See MPEP § 1214.01 for the procedure following anew ground of rejection under 37 CFR 41.50(b).

1213.03 Publication of and Public Access toBoard Decision [R-11.2013]

37 CFR 41.6 Public availability of Board records.

(a) Publication.

(1) Generally. Any Board action is available for publicinspection without a party’s permission if rendered in a file opento the public pursuant to § 1.11 of this title or in an applicationthat has been published in accordance with §§ 1.211 to 1.221of this title. The Office may independently publish any Boardaction that is available for public inspection.

(2) Determination of special circumstances. Any Boardaction not publishable under paragraph (a)(1) of this sectionmay be published or made available for public inspection if theDirector believes that special circumstances warrant publicationand a party does not, within two months after being notified ofthe intention to make the action public, object in writing on theground that the action discloses the objecting party’s trade secretor other confidential information and states with specificity thatsuch information is not otherwise publicly available. If the actiondiscloses such information, the party shall identify the deletionsin the text of the action considered necessary to protect theinformation. If the affected party considers that the entire actionmust be withheld from the public to protect such information,the party must explain why. The party will be given time, notless than twenty days, to request reconsideration and seek courtreview before any contested portion of the action is made publicover its objection.

(b) Record of proceeding.

(1) The record of a Board proceeding is available tothe public unless a patent application not otherwise available tothe public is involved.

(2) Notwithstanding paragraph (b)(1) of this section,after a final Board action in or judgment in a Board proceeding,the record of the Board proceeding will be made available tothe public if any involved file is or becomes open to the publicunder § 1.11 of this title or an involved application is or becomespublished under §§ 1.211 to 1.221 of this title.

Any Board decision is available for public inspectionwithout a party’s permission if rendered in a fileopen to the public pursuant to 37 CFR 1.11 or in anapplication that has been published in accordancewith 37 CFR 1.211 through 1.221. The Office mayindependently publish any Board action that isavailable for public inspection.

Decisions of the Board which are open to the publicare available in electronic form on the USPTO Web

site (http://www.uspto.gov) in the FOIA readingroom.

Any Board decision rendered in a file not open tothe public pursuant to 37 CFR 1.11 or in anapplication that has not been published in accordancewith 37 CFR 1.211 through 1.221 may be publishedor made available for public inspection under 37CFR 41.6(a)(2) if the Director believes that specialcircumstances warrant publication.

1214 Procedure Following Decision by Board[R-11.2013]

37 CFR 41.54 Action following decision.

After decision by the Board, jurisdiction over an application orpatent under ex parte reexamination proceeding passes to theexaminer, subject to appellant's right of appeal or other review,for such further action by appellant or by the examiner, as thecondition of the application or patent under ex partereexamination proceeding may require, to carry into effect thedecision.

After an appeal to the Board has been decided, acopy of the decision is provided to appellant andplaced in IFW. The 63-day time period for filing anappeal or commencing a civil action under 37 CFR90.3, or the two month period for filing a request forrehearing under 37 CFR 41.52, begins to run fromthe “MAIL DATE” if the decision is provided bypaper delivery, or the “NOTIFICATION DATE” ifthe decision is provided by electronic delivery, asshown on the FORM PTOL-90A attached to thedecision. The application is returned to theTechnology Center electronically via a change inthe PALM status code reflecting the decision of theBoard. If the Board decision affirms or affirms inpart the decision of the examiner, the examiner mustawait the expiration of this two month period beforetaking any further action.

1214.01 Procedure Following New Groundof Rejection by Board [R-08.2017]

When the Board designates a new ground ofrejection under 37 CFR 41.50(b), the appellant, asto each claim so rejected, has the option of:

(A) reopening prosecution before the examinerby submitting an appropriate amendment and/or newevidence (37 CFR 41.50(b)(1)); or

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1213.03

(B) requesting rehearing before the Board (37CFR 41.50(b)(2)).

This procedure only applies where the Boarddesignates a rejection as a new ground of rejectionunder 37 CFR 41.50(b). If an appellant believes thata Board decision that appears to be an affirmance isactually a new ground of rejection, review of anyundesignated new ground of rejection is by way of37 CFR 41.50(c) and 37 CFR 41.52 and not throughthe procedure described here.

Where a decision designates a new ground ofrejection under 37 CFR 41.50(b), the Board retainsjurisdiction over the appeal until:

(a) the time for response expires and the Boardenters an order of dismissal (37 CFR 41.35(b)(5)),or

(b) appellant reopens prosecution in response tothe new grounds of rejection (37 CFR 41.35(b)(6)).

The amendment and/or new evidence under 37 CFR41.50(b)(1), or the request for rehearing under 37CFR 41.50(b)(2), must be filed within 2 months fromthe date of the Board’s decision. In accordance with37 CFR 41.50(f), this 2-month time period may notbe extended by the filing of a petition and fee under37 CFR 1.136(a), but only under the provisions of37 CFR 1.136(b), or under 37 CFR 1.550(c) if theappeal involves an ex parte reexaminationproceeding.

If an appellant files an appropriate amendment ornew evidence (see paragraph I below) as to less thanall of the claims rejected by the Board under 37 CFR41.50(b), and a request for rehearing (see paragraphII below) as to the remainder of the claims sorejected, the examiner will not consider the claimsfor which rehearing was requested. The request forrehearing will be considered by the Board afterprosecution before the examiner with respect to thefirst group of claims is terminated. Argument as toany of the claims rejected by the Board which is notaccompanied by an appropriate amendment or newevidence as to those claims will be treated as arequest for rehearing as to those claims.

I. SUBMISSION OF AMENDMENT OR NEWEVIDENCE

37 CFR 41.50(b)(1) provides that the applicationwill be remanded to the examiner for reconsiderationif the appellant submits “an appropriate amendment”of the claims rejected by the Board, “or newevidence relating to the claims so rejected, or both.”An amendment is “appropriate” under the rule if itamends one or more of the claims rejected, orsubstitutes new claims to avoid the art or reasonsadduced by the Board. Ex parte Burrowes, 110 O.G.599, 1904 C.D. 155 (Comm’r Pat. 1904). Suchamended or new claims must be directed to the samesubject matter as the appealed claims. Ex parteComstock, 317 O.G. 4,1923 C.D. 82 (Comm’r Pat.1923). An amendment which adds new claimswithout either amending the rejected claims, orsubstituting new claims for the rejected claims, isnot appropriate. The new claims will not be entered,and the examiner should consult a supervisor to havethe entry in the file changed to a request forrehearing under 37 CFR 41.50(b)(2), if it containsany argument concerning the Board’s rejection. The“new evidence” under the rule may be a showingunder 37 CFR 1.130, 1.131 or 1.132, as may beappropriate.

If the appellant submits an argument without eitheran appropriate amendment or new evidence as toany of the claims rejected by the Board, it will betreated as a request for rehearing under 37 CFR41.50(b)(2).

The new ground of rejection raised by the Boarddoes not reopen prosecution except as to that subjectmatter to which the new rejection was applied. If theBoard’s decision in which the rejection under37 CFR 41.50(b) was made includes an affirmanceof the examiner’s rejection, the basis of the affirmedrejection is not open to further prosecution. If theappellant elects to proceed before the examiner withregard to the new rejection, the Board’s affirmanceof the examiner’s rejection will be treated as nonfinalfor purposes of seeking judicial review, and norequest for reconsideration of the affirmance needbe filed at that time. Prosecution before the examinerof the 37 CFR 41.50(b) rejection can incidentallyresult in overcoming the affirmed rejection eventhough the affirmed rejection is not open to further

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§ 1214.01APPEAL

prosecution. Therefore, it is possible for theapplication to be allowed as a result of the limitedprosecution before the examiner of the 37 CFR41.50(b) rejection. If the application becomesallowed, the application should not be returned tothe Board. Likewise, if the application is abandonedfor any reason, the application should not be returnedto the Board. If the rejection under 37 CFR 41.50(b)is not overcome, the applicant can file a secondappeal (as discussed below). Such appeal must belimited to the 37 CFR 41.50(b) rejection and maynot include the affirmed rejection. If the applicationdoes not become allowed or abandoned as discussedabove, once prosecution of the claims which wererejected under 37 CFR 41.50(b) is terminated beforethe examiner, the application file must be returnedto the Board so that a decision making the originalaffirmance final can be entered.

The time for filing a request for rehearing on theaffirmance or seeking court review runs from thedate of the decision by the Board making the originalaffirmance final. See MPEP §§ 1214.03 and 1216.The date of the decision is the "mailing date" or"notification date" indicated on form PTOL-90accompanying the Board decision. See In reMcNeil-PPC, 574 F.3d 1393, 91 USPQ2d 1576 (Fed.Cir. 2009).

If the examiner does not consider that theamendment and/or new evidence overcomes therejection, the examiner will again reject the claims.If appropriate, the rejection will be made final.

An applicant in whose application such a finalrejection has been made by the examiner maymistakenly believe that they are entitled to reviewby the Board of the rejection by virtue of theprevious appeal, but under the provisions of 37 CFR41.50(b)(1), after such a final rejection, an applicantwho desires further review of the matter must file anew appeal to the Board. Such an appeal from thesubsequent rejection by the examiner will be anentirely new appeal involving a different ground andwill require a new notice of appeal, appeal brief, andthe payment of the appropriate fees.

II. REQUEST FOR REHEARING

Instead of filing an amendment and/or new evidenceunder 37 CFR 41.50(b)(1), an appellant may electto proceed under 37 CFR 41.50(b)(2) and file arequest for rehearing of the Board’s new rejection.The rule requires that the request for rehearing “mustaddress any new ground of rejection and state withparticularity the points believed to have beenmisapprehended or overlooked in rendering thedecision and also state all other grounds upon whichrehearing is sought.” By proceeding in this manner,the appellant waives their right to further prosecutionbefore the examiner. In re Greenfield, 40 F.2d 775,5 USPQ 474 (CCPA 1930). This waiver extends tothe appellant’s right to amend claims under 37 CFR41.50(b)(1); appellant may still invoke the limitedright to rewrite dependent claims not subject to thenew grounds of rejection into independent form. SeeMPEP § 1214.06. A request for rehearingaccompanied by an appropriate amendment of theclaims rejected by the Board, and/or by newevidence, does not constitute a proper request forrehearing under 37 CFR 41.50(b)(2), and will betreated as a submission under 37 CFR 41.50(b)(1).

If the Board’s decision also includes an affirmanceof the examiner’s rejection, a request for rehearingof the affirmance (see MPEP §§ 1214.03 and 1214.06, subsection IV.) should be filed in aseparate paper to facilitate consideration.

1214.02 [Reserved]

1214.03 Rehearing [R-11.2013]

37 CFR 41.52 Rehearing.

(a)(1) Appellant may file a single request for rehearingwithin two months of the date of the original decision of theBoard. No request for rehearing from a decision on rehearingwill be permitted, unless the rehearing decision so modified theoriginal decision as to become, in effect, a new decision, andthe Board states that a second request for rehearing would bepermitted. The request for rehearing must state with particularitythe points believed to have been misapprehended or overlookedby the Board. Arguments not raised, and Evidence not previouslyrelied upon, pursuant to §§ 41.37, 41.41, or 41.47 are notpermitted in the request for rehearing except as permitted byparagraphs (a)(2) through (a)(4) of this section. When a requestfor rehearing is made, the Board shall render a decision on therequest for rehearing. The decision on the request for rehearingis deemed to incorporate the earlier opinion reflecting its

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decision for appeal, except for those portions specificallywithdrawn on rehearing, and is final for the purpose of judicialreview, except when noted otherwise in the decision onrehearing.

(2) Appellant may present a new argument based upona recent relevant decision of either the Board or a Federal Court.

(3) New arguments responding to a new ground ofrejection designated pursuant to § 41.50(b) are permitted.

(4) New arguments that the Board's decision containsan undesignated new ground of rejection are permitted.

(b) Extensions of time under § 1.136(a) of this title forpatent applications are not applicable to the time period set forthin this section. See § 1.136(b) of this title for extensions of timeto reply for patent applications and § 1.550(c) of this title forextensions of time to reply for ex parte reexaminationproceedings.

The term “rehearing” is used in 37 CFR 41.52 forconsistency with the language of 35 U.S.C. 6(b). Itshould not be interpreted as meaning that anappellant is entitled to an oral hearing on the requestfor rehearing, but only to a rehearing on the writtenrecord. It is not the normal practice of the Board togrant rehearings in the sense of another oral hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App.1967), rev’d. on other grounds, 434 F.2d 1390,168 USPQ 99 (CCPA 1970).

37 CFR 41.52 provides that any request for rehearingmust specifically state the points believed to havebeen misapprehended or overlooked in the Board’sdecision. Experience has shown that many requestsfor rehearing are nothing more than reargument ofappellant’s position on appeal. In response, the rulewas revised to limit requests to the points of law orfact which appellant feels were overlooked ormisapprehended by the Board. Arguments not raisedin the briefs before the Board and evidence notpreviously relied upon in the brief and any replybrief(s) are not permitted in the request for rehearingexcept appellant may present (A) new argument(s)based upon a recent relevant decision of either theBoard or a Federal Court, (B) new argument(s)responding to a new ground of rejection madepursuant to 37 CFR 41.50(b), and (C) newargument(s) that the Board’s decision contains anundesignated new ground of rejection. If appellantrelies upon a recent relevant decision of either theBoard or a Federal Court, a remand by the Board tothe examiner to respond to that new argument maybe appropriate.

The 2-month period provided by 37 CFR 41.52(a)for filing a request for rehearing can only beextended under the provisions of 37 CFR 1.136(b)or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.

For extension of time to appeal to the Court ofAppeals for the Federal Circuit or commence a civilaction under 37 CFR 90.3(c), see MPEP § 1216 and§ 1002.02(o).

For requests for reconsideration by the examiner,see MPEP § 1214.04.

Should an Administrative Patent Judge (APJ) retireor otherwise become unavailable to reconsider adecision, normally another APJ will be designatedas a substitute for the unavailable APJ.

1214.04 Examiner Reversed in Whole[R-08.2017]

A complete reversal of the examiner’s rejectionbrings the case up for immediate action by theexaminer. If the reversal does not place anapplication in condition for immediate allowance(e.g., the Board has entered a new ground ofrejection under 37 CFR 41.50(b) or the applicationcontains withdrawn claims to a non-electedinvention), the examiner should refer to the situationsoutlined in MPEP § 1214.06 for appropriateguidance.

The examiner should never regard such a reversalas a challenge to make a new search to uncover otherand better references. This is particularly so wherethe application or ex parte reexamination proceedinghas meanwhile been transferred or assigned to anexaminer other than the one who rejected the claimsleading to the appeal. The second examiner shouldgive full faith and credit to the prior examiner’ssearch.

If the examiner has specific knowledge of theexistence of a particular reference or referenceswhich indicate nonpatentability of any of theappealed claims as to which the examiner wasreversed, they should submit the matter to theTechnology Center (TC) Director or Central

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§ 1214.04APPEAL

Reexamination Unit (CRU) Director forauthorization to reopen prosecution under 37 CFR1.198 for the purpose of entering the new rejection.See MPEP § 1002.02(c) and MPEP § 1214.07. TheTC or CRU Director’s approval is placed on theaction reopening prosecution.

The examiner may request rehearing of the Boarddecision. Such a request should normally be madewithin 2 months of the return of the application tothe TC or the reexamination proceeding or reissueapplication to the CRU.

All requests by the examiner to the Board forrehearing of a decision must be approved by the TCor CRU Director and must also be forwarded to theOffice of the Deputy Commissioner for PatentExamination Policy for approval before mailing.

The request for rehearing must state withparticularity the points believed to have beenmisapprehended or overlooked by the Board.Arguments not raised in the answers before theBoard and evidence not previously relied upon inthe answers are not permitted in the request forrehearing except that the examiner may present anew argument based upon a recent relevant decisionof either the Board or a Federal Court.

The request should set a period of 2 months for theappellant to file a reply.

If the request for rehearing is approved by the Officeof the Deputy Commissioner for Patent ExaminationPolicy, the TC or CRU will enter the request forrehearing in the electronic file and a copy will bemailed or given to the appellant.

1214.05 Cancellation of Claims Not Appealed[R-11.2013]

Pursuant to 37 CFR 41.31(c), an appeal is presumedto be taken from the rejection of all claims. Where,in an appeal brief filed before January 23, 2012, anappellant withdraws some of the appealed claims(i.e., claims subject to a ground of rejection that theappellant did not present for review in the brief), andthe Board reverses the examiner on the remainingappealed claims, the withdrawal is treated as an

authorization to cancel the withdrawn claims. It isnecessary for the examiner to notify the appellantof the cancellation of the withdrawn claims. SeeMPEP § 1205.02.

1214.06 Examiner Sustained in Whole or inPart; Claims Require Action [R-08.2017]

37 CFR 41.35 Jurisdiction over appeal.*****

(b) End of jurisdiction. The jurisdiction of the Board endswhen:

*****

(2) The Board enters a final decision (see § 41.2) andjudicial review is sought or the time for seeking judicial reviewhas expired,

*****

37 CFR 1.197 Termination of proceedings.

(a) Proceedings on an application are considered terminatedby the dismissal of an appeal or the failure to timely file anappeal to the court or a civil action except:

(1) Where claims stand allowed in an application; or

(2) Where the nature of the decision requires furtheraction by the examiner.

(b) The date of termination of proceedings on an applicationis the date on which the appeal is dismissed or the date on whichthe time for appeal to the U.S. Court of Appeals for the FederalCircuit or review by civil action (§ 90.3 of this chapter) expiresin the absence of further appeal or review. If an appeal to theU.S. Court of Appeals for the Federal Circuit or a civil actionhas been filed, proceedings on an application are consideredterminated when the appeal or civil action is terminated. A civilaction is terminated when the time to appeal the judgmentexpires. An appeal to the U.S. Court of Appeals for the FederalCircuit, whether from a decision of the Board or a judgment ina civil action, is terminated when the mandate is issued by theCourt.

The practice under the situations identified insubsections I-III below is similar to the practice aftera decision of the court outlined in MPEP § 1216.01.Examiners must be very careful that applicationsand ex parte reexamination proceedings that leavethe jurisdiction of the Board are not overlookedbecause every case is up for action by the examinerin the event no court review has been sought. SeeMPEP §§ 1216.01 and 1216.02 for procedure wherecourt review is sought.

As provided by 37 CFR 90.3, the time for seekingreview of a decision of the Board by the Court ofAppeals for the Federal Circuit or the U.S. District

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1214.05

Court for the Eastern District of Virginia is the samefor both tribunals, that is, 63 days plus any additionaltime requested and granted under 37 CFR 90.3(c).In the event a request for rehearing is timely filedbefore the Board, or as extended by the Director.See MPEP § 1216. When the time for seeking courtreview has passed without such review being sought,the examiner must take up the application or exparte reexamination for consideration. The situationswhich can arise will involve one or more of thefollowing circumstances:

I. NO CLAIMS STAND ALLOWED

The proceedings in an application or ex parte reexamination proceeding are terminated as of thedate of the expiration of the time for filing courtaction. The application is no longer considered aspending. In an application, a Notice of Abandonmentshould be prepared and mailed once the period forseeking review under 37 CFR 90.3 has expired. Inan ex parte reexamination proceeding, a notice ofintent to issue a reexamination certificate should beissued under 37 CFR 1.570 once the period forseeking review under 37 CFR 90.3 has expired.

If the application includes a non-statutory doublepatenting rejection which was affirmed by the Boardor a provisional rejection that was not addressed bythe Board, the applicant may file a proper terminaldisclaimer prior to the expiration of the period forseeking review under 37 CFR 90.3 to overcome therejection. If the terminal disclaimer is insufficientto overcome the rejection the applicant will not begranted additional time to correct the deficiency. SeeMPEP §§ 804.02 and 1490.

Claims indicated as allowable but objected to priorto appeal because of their dependency from rejectedclaims will be treated as if they were rejected, unlessan amendment pursuant to 37 CFR 41.33(b)(2)rewriting such claims in independent form is filedwithin the period for seeking review under 37 CFR90.3. See MPEP § 1206. The following examplesillustrate the appropriate approach to be taken by theexaminer in various situations in applications:

(A) If claims 1-2 are pending, the Board affirmsa rejection of independent claim 1, dependent claim2 was objected to prior to forwarding of the appealas being allowable except for its dependency from

claim 1 and claim 2 remains in dependent form, theexaminer should hold the application abandoned.

(B) If the Board or court affirms a rejectionagainst an independent claim and reverses allrejections against a claim dependent thereon, afterexpiration of the period for further appeal, theexaminer should proceed in one of two ways:

(1) Convert the dependent claim intoindependent form by examiner’s amendment, cancelall claims in which the rejection was affirmed, andissue the application; or

(2) Set a 2-month time limit in whichappellant may rewrite the dependent claim(s) inindependent form. Extensions of time under 37 CFR1.136(a) are available. If no timely reply is received,the application is abandoned since no claims standallowed.

The following form paragraph may be used whereappropriate:

¶ 12.291 Examiner Sustained in Part - Requirement ofRewriting Dependent Claims (No Allowed Claim)

The Patent Trial Appeal Board affirmed the rejection(s) againstindependent claim(s) [1], but reversed all rejections againstclaim(s) [2] dependent thereon. There are no allowed claims inthe application. The independent claim(s) is/are cancelled bythe examiner in accordance with MPEP § 1214.06. Applicantis given a TWO MONTH TIME PERIOD from the mailing dateof this letter in which to present the dependent claim(s) inindependent form to avoid ABANDONMENT of the application.EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) AREAVAILABLE. Prosecution is otherwise closed.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, enter the independent claim number(s) forwhich the Board affirmed the rejection(s).

3. In bracket 2, enter the dependent claim number(s) for whichthe Board reversed the rejection(s).

For procedures in reexamination proceedings, seeMPEP § 2278 , subsection I.

II. CLAIMS STAND ALLOWED

The appellant is not required to file a reply. Theexaminer issues the application or ex partereexamination certificate on the claims which standallowed. It is not necessary for the applicant or patentowner to cancel the rejected claims, since they may

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§ 1214.06APPEAL

be canceled by the examiner in an examiner’samendment.

If the Board affirms a rejection of claim 1, claim 2was objected to prior to appeal as beingallowable except for its dependency from claim 1and independent claim 3 is allowed, the examinershould cancel claims 1 and 2 and issue theapplication or ex parte reexamination certificatewith claim 3 only.

If the Board affirms a rejection against independentclaim 1, reverses all rejections against dependentclaim 2 and claim 3 is allowed, after expiration ofthe period for further appeal, the examiner shouldeither:

(A) Convert dependent claim 2 into independentform by examiner’s amendment, cancel claim 1 inwhich the rejection was affirmed, and issue theapplication or ex parte reexamination certificatewith claims 2 and 3; or

(B) Set a time limit in which appellant mayrewrite dependent claim 2 in independent form.Extensions of time under 37 CFR 1.136(a) will notbe permitted. If no timely reply is received, theexaminer will cancel claims 1 and 2 and issue theapplication with allowed claim 3 only.

The following form paragraphs may be used whereappropriate:¶ 12.292 Examiner Sustained in Part - Requirement ofRewriting Dependent Claims (At Least One Allowed Claim)

The Patent Trial and Appeal Board affirmed the rejection(s)against independent claim(s) [1], but reversed all rejectionsagainst claim(s) [2] dependent thereon. The independent claim(s)is/are cancelled by the examiner in accordance with MPEP §1214.06. Applicant is given a TWO MONTH TIME PERIODfrom the mailing date of this letter in which to present thedependent claim(s) in independent form. EXTENSIONS OFTIME UNDER 37 CFR 1.136 ARE AVAILABLE. Failure tocomply will result in cancellation of the dependent claims andthe application will be allowed with claim(s) [3]. Prosecutionis otherwise closed.

Examiner Note:

1 For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, enter the independent claim number(s) forwhich the Board affirmed the rejection(s).

3. In bracket 2, enter the dependent claim number(s) for whichthe Board reversed the rejection(s).

4. In bracket 3, enter the claim number(s) of the allowedclaims.

If uncorrected matters of form which cannotbe handled without written correspondence remainin the application, the examiner should takeappropriate action but prosecution is otherwiseclosed. A letter such as that set forth in formparagraph 12.297 is suggested:

¶ 12.297 Period For Seeking Court Review Has Lapsed

The period under 37 CFR 90.3 for seeking court review of thedecision by the Patent Trial and Appeal Board rendered [1] hasexpired and no further action has been taken by appellant. Theproceedings as to the rejected claims are considered terminated;see 37 CFR 1.197(b).

The application will be passed to issue on allowed claim [2]provided the following formal matters are promptly corrected:[3]. Prosecution is otherwise closed.

Applicant is required to make the necessary correctionsaddressing the outstanding formal matters within a shortenedstatutory period set to expire TWO MONTHS from the mailingdate of this letter to avoid ABANDONMENT of the application.Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, enter the mailing date of the decision (ornotification date of the decision if electronic mail notificationwas sent to the appellant under the e-Office Action program).

3. In bracket 2, identify the allowed claims.

4. In bracket 3, identify the formal matters that needcorrection.

For procedures in reexamination proceedings, seeMPEP § 2278 , subsection II.

III. CLAIMS REQUIRE ACTION

A decision of the Board may include a reversal of arejection that brings certain claims up for action onthe merits. These decisions include the reversal ofthe rejection of generic claims in an applicationcontaining claims to nonelected species notpreviously acted upon. The application may alsocontain a provisional rejection which was notreached in the Board's decision. The examiner willtake up the application for appropriate action on thematters thus brought up. However, the application

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is not considered open to further prosecution exceptas to such matters.

A. Application contains non-elected claims

If, upon review of the decision of the Board, theelected claims are in condition for allowance andthe application contains claims directed to anon-elected invention, whether the election wasmade with or without traverse, the non-electedinvention should be considered for rejoinder. SeeMPEP § 821.04.

If the decision of the Board includes a reversal ofall rejections of a generic claim, pending claimsdrawn to a non-elected species must be acted upon.The only exception is when, the examiner reopensprosecution and enters a new ground of rejection ofthe generic claim and determines that the electionof species continues to be appropriate; in suchsituations the generic claim and any claims drawnto the elected species are examined on the meritsand claims drawn to non-elected species remainwithdrawn from consideration. See MPEP § 809.

B. Application contains a provisional nonstatutory doublepatenting rejection, which was not reached by the Board.

If a decision by the Board does not include anopinion on a provisional nonstatutory doublepatenting rejection, and includes a reversal of allother grounds as to a claim rejected based onprovisional nonstatutory double patenting and theapplicant has not filed a proper terminal disclaimer,the examiner must act upon the provisionalnonstatutory double patenting rejection. Theexaminer must first determine if any referenceapplication used in the provisional nonstatutorydouble patenting rejection has issued as a patent. Ifthe reference application has issued, the provisionalrejection should be re-issued as a non-provisionalrejection and a terminal disclaimer should berequired, for example, by using form paragraphs8.33-8.39 as appropriate. See MPEP § 804,subsection II.B. If the reference application has beenabandoned or has not matured to a patent and theprovisional double patenting rejection is the onlyremaining rejection in the application the examinershould withdraw the provisional rejection.

IV. 37 CFR 41.50(b) REJECTION

Where the Board makes a new rejection under37 CFR 41.50(b) and no action is taken withreference thereto by appellant within 2 months, theexaminer should proceed in the manner indicated inparagraphs I-III of this section as appropriate. SeeMPEP § 1214.01.

If the Board affirms the examiner’s rejection, butalso enters a new ground of rejection under 37 CFR41.50(b), the subsequent procedure depends uponthe action taken by the appellant with respect to the37 CFR 41.50(b) rejection.

(A) If the appellant elects to proceed before theexaminer with regard to the new rejection (see MPEP§ 1214.01, subsection I., the Board’s affirmance willbe treated as nonfinal, and no request for rehearingof the affirmance need be filed at that time. In orderto proceed before the examiner, applicant mustamend the newly rejected claims or submit newevidence, as defined in 37 CFR 41.33, or both. Ifapplicant presents arguments against the newgrounds of rejection without amendment or evidence,jurisdiction over the appeal should remain with theBoard. The Board, having made the new ground ofrejection and thus having the most completeunderstanding of the logic and analysis that led tothe new ground, is in the best position to evaluateappellant’s rebuttal arguments in a request forrehearing. It is only in the instance where appellantchooses to amend the claims or submit new evidencethat prosecution must be reopened and the casereturned to the examiner to consider the amendmentand/or new evidence in the first instance. Should anexaminer discover that a reply containing onlyarguments against a new ground of rejection hasbeen returned to the examining corps, the appealshould be returned to the Board for appropriatehandling.

Prosecution before the examiner of the 37 CFR41.50(b) rejection can incidentally result inovercoming the affirmed rejection even though theaffirmed rejection is not open to further prosecution.Therefore, it is possible for the application to beallowed as a result of the limited prosecution beforethe examiner of the 37 CFR 41.50(b) rejection. If anapplication becomes allowed, it should not bereturned to the Board. Likewise, if an application is

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§ 1214.06APPEAL

abandoned for any reason, it should not be returnedto the Board. If the rejection under 37 CFR 41.50(b)is not overcome, the applicant (or patent owner inan ex parte reexamination proceeding) can file asecond appeal (as discussed below). Such appealmust be limited to the 37 CFR 41.50(b) rejectionand may not include the affirmed rejection. If anapplication does not become allowed or abandonedas discussed above, once prosecution of the claimswhich were rejected under 37 CFR 41.50(b) isterminated before the examiner, the application filemust be returned to the Board so that a decisionmaking the original affirmance final can be entered.Similarly, the file of any ex parte reexaminationproceeding including decisions including rejectionsaffirmed by the Board but made non-final forpurposes of judicial review must be returned to theBoard so that the affirmance can be made final bythe Board. The time for filing a request for rehearingon the affirmance or seeking court review runs fromthe date of the decision by the Board making theoriginal affirmance final. See MPEP §§ 1214.03 and1216.

(B) If the appellant elects to request rehearingof the new rejection (see MPEP § 1214.01, paragraphII), the request for rehearing of the new rejectionand of the affirmance must be filed within 2 monthsfrom the date of the Board’s decision.

1214.07 Reopening of Prosecution[R-11.2013]

37 CFR 1.198 Reopening after a final decision of the PatentTrial and Appeal Board.

When a decision by the Patent Trial and Appeal Board on appealhas become final for judicial review, prosecution of theproceeding before the primary examiner will not be reopenedor reconsidered by the primary examiner except under theprovisions of § 1.114 or § 41.50 of this title without the writtenauthority of the Director,and then only for the consideration ofmatters not already adjudicated, sufficient cause being shown.

Sometimes an amendment is filed after the Board’sdecision which presents a new or amended claim orclaims. In view of the fact that prosecution is closed,the appellant is not entitled to have such amendmententered as a matter of right. However, if theamendment is submitted with a request for continuedexamination (RCE) under 37 CFR 1.114 and the feeset forth in 37 CFR 1.17(e), prosecution of theapplication will be reopened and the amendmentwill be entered. See MPEP § 706.07(h), subsection

XI. Note that the RCE practice under 37 CFR 1.114does not apply to utility or plant patent applicationsfiled before June 8, 1995 or to design applications.See 37 CFR 1.114(d) and MPEP § 706.07(h),subsection I. If the amendment obviously places anapplication in condition for allowance, regardless ofwhether the amendment is filed with an RCE, theprimary examiner should recommend that theamendment be entered, and with the concurrence ofthe supervisory patent examiner, the amendmentwill be entered. Note MPEP § 1002.02(d).

Where the amendment cannot be entered, theexaminer should write to the appellant indicatingthat the amendment cannot be entered and statingthe reason why. The refusal may not be arbitrary orcapricious.

Form paragraph 12.298 should be used:

¶ 12.298 Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Patent Trial andAppeal Board is not entered because prosecution is closed. Asprovided in 37 CFR 1.198, prosecution of the proceeding beforethe primary examiner will not be reopened or reconsidered bythe primary examiner after a final decision of the Board exceptunder the provisions of 37 CFR 1.114 (request for continuedexamination) or 37 CFR 41.50 without the written authority ofthe Director, and then only for the consideration of matters notalready adjudicated, sufficient cause being shown.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the date the amendment was filed.

3. This form paragraph is not to be used where a 37 CFR41.50(b) rejection has been made by the Board.

In the event that claims stand allowed in theapplication under the conditions set forth in MPEP§ 1214.06, paragraph II, the application should bepassed to issue.

Petitions under 37 CFR 1.198 to reopen or reconsiderprosecution of a case after decision by the Board,where no court action has been filed, are decided bythe Technology Center Director, MPEP § 1002.02(c).

The Director of the USPTO also entertains petitionsunder 37 CFR 1.198 to reopen certain cases in whichan appellant has sought review under 35 U.S.C. 141or 145. This procedure is restricted to cases which

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have been decided by the Board and which areamenable to settlement without the need for goingforward with the court proceeding. Such petitionswill ordinarily be granted only in the followingcategories of cases:

(A) When the decision of the Board asserts thatthe rejection of the claims is proper because theclaims do not include a disclosed limitation orbecause they suffer from some other curable defect,and the decision reasonably is suggestive that claimsincluding the limitation or devoid of the defect willbe allowable;

(B) When the decision of the Board asserts thatthe rejection of the claims is proper because therecord does not include evidence of a specifiedcharacter, and is reasonably suggestive that if suchevidence were presented, the appealed claims wouldbe allowable, and it is demonstrated that suchevidence presently exists and can be offered; or

(C) When the decision of the Board is based ona practice, rule, law, or judicial precedent which,since the Board’s decision, has been rescinded,repealed, or overruled.

Such petitions will not be ordinarily entertained afterthe filing of the Director’s brief in cases in whichreview has been sought under 35 U.S.C. 141, or aftertrial in a 35 U.S.C. 145 case.

In the case of an appeal under 35 U.S.C. 141, if thepetition is granted, steps will be taken to request thecourt to remand the case to the U. S. Patent andTrademark Office. If so remanded, the proposedamendments, evidence, and arguments will beentered of record in the application file forconsideration, and further action will be taken bythe Board in the first instance or by the examiner asmay be appropriate. In the case of civil action under35 U.S.C. 145, steps will be taken for obtainingdismissal of the action without prejudice toconsideration of the proposals.

1215 Withdrawal or Dismissal of Appeal[R-11.2013]

1215.01 Withdrawal of Appeal [R-11.2013]

Where, after an appeal has been filed and beforedecision by the Board, an applicant withdraws theappeal after the period for reply to the final rejectionhas expired, the application is to be consideredabandoned as of the date on which the appeal waswithdrawn unless there are allowed claims in thecase.

Where a letter abandoning the application is filed inaccordance with 37 CFR 1.138, the effective dateof abandonment is the date of recognition of theletter by an appropriate official of the Office or adifferent date, if so specified in the letter itself. SeeMPEP § 711.01.

If a brief has been filed within the time permitted by37 CFR 41.37 (or any extension thereof) and ananswer mailed and appellant withdraws the appealprior to transfer of jurisdiction to the Board under37 CFR 41.35(a), the application is returned to theexaminer. If appellant withdraws the appeal afterjurisdiction has been transferred to the Board,dismissal of the appeal will be handled by the Board.

Prior to a decision by the Board, if an applicantwishes to withdraw an application from appeal andto reopen prosecution of the application, applicantcan file a request for continued examination (RCE)under 37 CFR 1.114, accompanied by a submission(i.e., a reply responsive within the meaning of 37CFR 1.111 to the last outstanding Office action) andthe RCE fee set forth under 37 CFR 1.17(e). Notethat the RCE practice under 37 CFR 1.114 does notapply to utility or plant patent applications filedbefore June 8, 1995, design applications, orreexamination proceedings. See 37 CFR 1.114(d)and MPEP § 706.07(h), subsection X., for moredetails. An appeal brief or reply brief (or relatedpapers) is not a submission under 37 CFR 1.114,unless the transmittal letter of the RCE contains astatement that incorporates by reference thearguments in a previously filed appeal brief or replybrief. See MPEP § 706.07(h), subsection II. Thefiling of an RCE will be treated as a withdrawal ofthe appeal by the applicant, regardless of whether

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§ 1215.01APPEAL

the RCE includes the appropriate fee or asubmission. Therefore, when an RCE is filed withoutthe appropriate fee or a submission in an applicationthat has no allowed claims, the application will beconsidered abandoned. To avoid abandonment, theRCE should be filed in compliance with 37 CFR1.114. See MPEP § 706.07(h), subsections I-II.

Once appellant has filed a notice of appeal, appellantalso may request that prosecution be reopened forthe following situations:

(A) In response to a new ground of rejectionmade in an examiner’s answer, appellant may file areply in compliance with 37 CFR 1.111 thataddresses the new ground of rejection within twomonths from the mailing of the examiner’s answer(see MPEP § 1207.03).

(B) In response to a substitute examiner’s answerthat is written in response to a remand by the Boardfor further consideration of a rejection under 37 CFR41.50(a), appellant may file a reply in compliancewith 37 CFR 1.111 that addresses the rejection inthe substitute answer within two months from themailing of the substitute answer (see MPEP §1207.05).

To avoid the rendering of decisions by the Board inapplications which have already been refiled ascontinuations, applicants should promptly informthe Clerk of the Board in writing as soon as theyhave positively decided to refile or to abandon anapplication containing an appeal awaiting a decision.Applicants also should advise the Board when anRCE is filed in an application containing an appealawaiting decision. Failure to exercise appropriatediligence in this matter may result in the Boardrefusing an otherwise proper request to vacate itsdecision.

Upon the withdrawal of an appeal, an applicationhaving no allowed claims is abandoned, and a noticeof abandonment should be mailed. Claims which areallowable except for their dependency from rejectedclaims will be treated as if they were rejected. Thefollowing examples illustrate the appropriateapproach to be taken by the examiner in varioussituations:

(A) Claim 1 is allowed; claims 2 and 3 arerejected. The examiner should cancel claims 2 and3 and issue the application with claim 1 only.

(B) Claims 1 - 3 are rejected. The examinershould hold the application abandoned.

(C) Claim 1 is rejected and claim 2 is objectedto as being allowable except for its dependency fromclaim 1. The examiner should hold the applicationabandoned.

(D) Claim 1 is rejected and claim 2 is objectedto as being allowable except for its dependency fromclaim 1; independent claim 3 is allowed. Theexaminer should cancel claims 1 and 2 and issue theapplication or ex parte reexamination certificatewith claim 3 only.

In an ex parte reexamination proceeding, an exparte reexamination certificate should be issuedunder 37 CFR 1.570.

1215.02 Claims Standing Allowed[R-08.2012]

If an application contains allowed claims, as well asclaims on appeal, the withdrawal of the appeal doesnot operate as an abandonment of the application,but is considered a withdrawal of the appeal as tothose claims and authority to the examiner to cancelthe same. An amendment canceling the appealedclaims is equivalent to a withdrawal of the appeal.

1215.03 Partial Withdrawal [R-11.2013]

If an appellant wishes to remove claims fromconsideration on appeal, the appellant must submitan amendment to cancel the claims from theapplication. See 37 CFR 41.31(c) and 41.33. Anappellant may, of course, choose not to presentarguments or rely upon particular evidence as tocertain claim rejections; however, such argumentsand evidence are waived for purposes of the appealand the Board may summarily sustain any groundsof rejections not argued. See MPEP §§ 1205.02 and1214.05.

If appellant fails to respond to a new ground ofrejection made in an examiner’s answer by eitherfiling a reply brief or a reply under 37 CFR 1.111within 2 months from the mailing of the examiner’s

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answer, the appeal will be sua sponte dismissed bythe Board as to the claims subject to the new groundof rejection.

Similarly, if appellant fails to respond to a substituteexaminer’s answer that is written in response to aremand by the Board for further consideration of arejection under 37 CFR 41.50(a) by either filing areply brief or a reply under 37 CFR 1.111 within 2months from the mailing of the substitute examiner'sanswer, the appeal will sua sponte dismissed by theBoard as to the claims subject to the rejection forwhich the Board has remanded the proceeding. Suchsubstitute examiner’s answer may also include a newground of rejection.

1215.04 Dismissal of Appeal [R-08.2017]

I. DISMISSAL BECAUSE NO BRIEF WAS FILED

If no brief is filed within the time prescribed by37 CFR 41.37, the appeal stands dismissed byoperation of the rule. Unless appellant specificallywithdraws the appeal as to rejected claims, the appealshould not be dismissed until the extended period(5 months of extension are available under 37 CFR1.136(a)) to file the brief has expired.

Applications having no allowed claims will beabandoned. Claims which are allowable except fortheir dependency from rejected claims will be treatedas if they were rejected. However, as provided inMPEP § 1214.07, if an amendment has been filedwhich obviously places an application in conditionfor allowance, regardless of whether the amendmentis filed with an RCE, the primary examiner mayrecommend that the amendment be entered. Notealso MPEP § 1002.02(d), which requires theconcurrence of the supervisory patent examiner.

The following examples illustrate the appropriateapproach to be taken by the examiner in varioussituations:

(A) Claim 1 is allowed; claims 2 and 3 arerejected. The examiner should cancel claims 2 and3 and issue the application with claim 1 only.

(B) Claims 1 - 3 are rejected. The examinershould hold the application abandoned.

(C) Claim 1 is rejected and claim 2 is objectedto as being allowable except for its dependency fromclaim 1. The examiner should hold the applicationabandoned.

(D) Claim 1 is rejected and claim 2 is objectedto as being allowable except for its dependency fromclaim 1; independent claim 3 is allowed. If noamendment rewriting claim 2 in independent formhas been filed, the examiner should cancel claims 1and 2 and issue the application.

If formal matters remain to be attended to, theexaminer should take appropriate action on suchmatters. For example (1) the examiner may handlethe formal matters by examiner’s amendment (seeMPEP § 1302.04) or (2) the examiner may use formparagraph 12.209 to describe the formal matters thatapplicant is required to correct and set a shortenedperiod for reply. Note that further prosecution onthe application or reexamination proceeding is closedexcept as to such formal matters.

¶ 12.209 Appeal Dismissed - Allowed Claims, FormalMatters Remaining

In view of applicant’s failure to file a brief within the timeprescribed by 37 CFR 41.37(a), the appeal stands dismissed andthe proceedings as to the rejected claims are consideredterminated. See 37 CFR 1.197(b).

This application will be passed to issue on allowed claim [1]provided the following formal matters are corrected. Prosecutionis otherwise closed.

[2]

Applicant is required to make the necessary corrections withina shortened statutory period set to expire TWO MONTHS fromthe mailing date of this letter to avoid ABANDONMENT ofthe application. Extensions of time may be granted under 37CFR 1.136.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. This form paragraph should only be used if the formalmatters cannot be handled by examiner’s amendment. See MPEP§ 1215.04.

3. In bracket 2, insert a description of the formal matters tobe corrected.

4. Claims which have been indicated as containing allowablesubject matter but are objected to as being dependent upon arejected claim are to be considered as if they were rejected. SeeMPEP § 1215.04.

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§ 1215.04APPEAL

II. DISMISSAL BECAUSE BRIEF WAS HELDNON-COMPLIANT

An appeal will also be dismissed if an applicant failsto timely and fully reply to a notice ofnoncompliance with 37 CFR 41.37(d). See MPEP§ 1205.03 and 37 CFR 41.37(d). As in examples (B)- (C) above, if no allowed claims remain in anapplication, the application is abandoned as of thedate the reply to the notice was due. The applicantmay petition to revive the application as in othercases of abandonment, and to reinstate the appeal.If the appeal is dismissed, but allowed claims remainin the application, as in examples (A) and (D) above,the application is not abandoned; to reinstate theclaims cancelled by the examiner because of thedismissal, the applicant must petition under 37 CFR1.182 to reinstate the claims and the appeal, buta showing equivalent to a petition to revive under37 CFR 1.137 is required. In either event, a properreply to the notice of noncompliance must be filedbefore the petition will be considered on its merits.

III. DISMISSAL BECAUSE APPEALFORWARDING FEE WAS NOT PAID

As provided in 37 CFR 41.45(b) and MPEP §1208.01, if the appeal forwarding fee set forth in 37CFR 41.20(b)(4) is not paid within the period setforth in 37 CFR 41.45(a), the appeal will standdismissed. The application should be handled as setforth in subsection I above.

IV. DISMISSAL AS TO CLAIMS SUBJECTED TONEW GROUNDS OF REJECTION IN EXAMINER'SANSWER

As provided in MPEP § 1207.03, with TC Directorapproval, 37 CFR 41.39(a)(2) permits the entry ofnew grounds of rejection in an examiner’s answer.If the appellant does not timely respond to theexaminer’s answer, form paragraph 12.279.02 maybe used to dismiss the appeal as to the claims subjectto the new grounds of rejection.

¶ 12.279.02 Dismissal Following New Ground(s) of Rejectionin Examiner’s Answer

Appellant failed to timely respond to the examiner’s answermailed on [1] that included a new ground of rejection. Under37 CFR 41.39(b) , if an examiner’s answer contains a rejectiondesignated as a new ground of rejection, appellant must, within

two months from the date of the examiner’s answer, file either:(1) a request that prosecution be reopened by filing a reply under37 CFR 1.111; or (2) a request that the appeal be maintained byfiling a reply brief under 37 CFR 41.41, addressing each newground of rejection, to avoid sua sponte dismissal of the appealas to the claims subject to the new ground of rejection. In viewof appellant’s failure to file a reply under 37 CFR 1.111 or areply brief within the time period required by 37 CFR 41.39,the appeal as to claims [2] is dismissed, and these claims arecanceled.

Only claims [3] remain in the application. The appeal continuesas to these remaining claims. The application will be forwardedto the Board after mailing of this communication.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the mailing date of the examiner’sanswer.

3. In bracket 2, insert the claim numbers of the claims subjectto the new ground of rejection.

4. In bracket 3, insert the claim numbers of the claims thatare not subject to the new ground of rejection.

V. DISMISSAL FOLLOWING REMAND FROMTHE BOARD

An appeal may be dismissed if an appellant fails totimely and fully reply to a substitute examiner’sanswer which was written in response to a remandby the Board for further consideration of a rejectionunder 37 CFR 41.50(a)(1) . Pursuant to 37 CFR41.50(a)(1) , the appellant must, within two months,from the date of the substitute examiner’s answer,file either: (1) a request that prosecution be reopenedby filing a reply under 37 CFR 1.111; or (2) a requestthat the appeal be maintained by filing a reply briefunder 37 CFR 41.41, to avoid sua sponte dismissalof the appeal as to the claims subject to the rejectionfor which the Board has remanded the proceeding.If the appellant fails to timely and fully reply to thesubstitute examiner’s answer the appeal will bedismissed as to the claims subject to the rejectionremanded by the Board and those claims cancelled.The examiner may use form paragraph 12.286 toinform the appellant of their options .

¶ 12.286 Dismissal Following A Substitute Examiner’sAnswer Written in Response to a Remand for FurtherConsideration of a Rejection

Appellant failed to timely respond to the substitute examiner’sanswer mailed on [1] that was written in response to a remandby the Board for further consideration of a rejection. Under 37

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CFR 41.50(a)(2), appellant must, within two months from thedate of the substitute examiner’s answer, file either: (1) a requestthat prosecution be reopened by filing a reply under 37 CFR1.111; or (2) a request that the appeal be maintained by filing areply brief under 37 CFR 41.41, to avoid sua sponte dismissalof the appeal as to the claims subject to the rejection for whichthe Board has remanded the proceeding. In view of appellant’sfailure to file a reply under 37 CFR 1.111 or a reply brief withinthe time period required by 37 CFR 41.50(a)(2), the appeal asto claims [2] is dismissed, and these claims are canceled.

Only claims [3] remain in the application. The appeal continuesas to these remaining claims. The application will be forwardedto the Board after mailing of this communication.

Examiner Note:

1. For use if the notice of appeal was filed on or after January23, 2012.

2. In bracket 1, insert the mailing date of the substituteexaminer’s answer.

3. In bracket 2, insert the claim numbers of the claims subjectto the rejection for which the Board has remanded theproceeding.

4. In bracket 3, insert the claim numbers of the claims thatare not subject to the rejection.

1216 Judicial Review [R-11.2013]

35 U.S.C. 141 Appeal to Court of Appeals for the FederalCircuit.

(a) EXAMINATIONS.—An applicant who is dissatisfiedwith the final decision in an appeal to the Patent Trial andAppeal Board under section 134(a) may appeal the Board’sdecision to the United States Court of Appeals for the FederalCircuit. By filing such an appeal, the applicant waives his orher right to proceed under section 145.

(b) REEXAMINATIONS.—A patent owner who isdissatisfied with the final decision in an appeal of areexamination to the Patent Trial and Appeal Board undersection 134(a) may appeal the Board’s decision only to theUnited States Court of Appeals for the Federal Circuit.

(c) POST-GRANT AND INTER PARTES REVIEWS.—Aparty to an inter partes review or a post-grant review who isdissatisfied with the final written decision of the Patent Trialand Appeal Board under section 318(a) or 328(a) (as the casemay be) may appeal the Board’s decision only to the UnitedStates Court of Appeals for the Federal Circuit.

(d) DERIVATION PROCEEDINGS.—A party to aderivation proceeding who is dissatisfied with the final decisionof the Patent Trial and Appeal Board in the proceeding mayappeal the decision to the United States Court of Appeals forthe Federal Circuit, but such appeal shall be dismissed if anyadverse party to such derivation proceeding, within 20 daysafter the appellant has filed notice of appeal in accordance withsection 142, files notice with the Director that the party electsto have all further proceedings conducted as provided in section146. If the appellant does not, within 30 days after the filing ofsuch notice by the adverse party, file a civil action under section

146, the Board’s decision shall govern the further proceedingsin the case.

35 U.S.C. 145 Civil action to obtain patent.

An applicant dissatisfied with the decision of the Patent Trialand Appeal Board in an appeal under section 134(a) may, unlessappeal has been taken to the United States Court of Appeals forthe Federal Circuit, have remedy by civil action against theDirector in the United States District Court for the EasternDistrict of Virginia if commenced within such time after suchdecision, not less than sixty days, as the Director appoints. Thecourt may adjudge that such applicant is entitled to receive apatent for his invention, as specified in any of his claimsinvolved in the decision of the Patent Trial and Appeal Board,as the facts in the case may appear, and such adjudication shallauthorize the Director to issue such patent on compliance withthe requirements of law. All the expenses of the proceedingsshall be paid by the applicant.

35 U.S.C. 306 Appeal.

The patent owner involved in a reexamination proceeding underthis chapter may appeal under the provisions of section 134,and may seek court review under the provisions of sections 141to 144, with respect to any decision adverse to the patentabilityof any original or proposed amended or new claim of the patent.

37 CFR 90.1 Scope.

The provisions herein govern judicial review for Patent Trialand Appeal Board decisions under chapter 13 of title 35, UnitedStates Code. Judicial review of decisions arising out of interpartes reexamination proceedings that are requested under 35U.S.C. 311, and where available, judicial review of decisionsarising out of interferences declared pursuant to 35 U.S.C. 135continue to be governed by the pertinent regulations in effecton July 1, 2012.

37 CFR 90.2 Notice; service.

(a) For an appeal under 35 U.S.C. 141.

(1) In all appeals, the notice of appeal required by 35U.S.C. 142 must be filed with the Director of the United StatesPatent and Trademark Office as provided in § 104.2 of this title.A copy of the notice of appeal must also be filed with the PatentTrial and Appeal Board in the appropriate manner provided in§ 41.10(a), 41.10(b), or 42.6(b).

(2) In all appeals, the party initiating the appeal mustcomply with the requirements of the Federal Rules of AppellateProcedure and Rules for the United States Court of Appeals forthe Federal Circuit, including:

(i) Serving the requisite number of copies on theCourt; and

(ii) Paying the requisite fee for the appeal.

(3) Additional requirements.

(i) In appeals arising out of an ex parte reexamination proceeding ordered pursuant to § 1.525, noticeof the appeal must be served as provided in § 1.550(f) of thistitle.

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(ii) In appeals arising out of an inter partes review,a post-grant review, a covered business method patent review,or a derivation proceeding, notice of the appeal must providesufficient information to allow the Director to determine whetherto exercise the right to intervene in the appeal pursuant to 35U.S.C. 143, and it must be served as provided in § 42.6(e) ofthis title.

(b) For a notice of election under 35 U.S.C. 141(d) toproceed under 35 U.S.C. 146.

(1) Pursuant to 35 U.S.C. 141(d), if an adverse partyelects to have all further review proceedings conducted under35 U.S.C. 146 instead of under 35 U.S.C. 141, that party mustfile a notice of election with the United States Patent andTrademark Office as provided in § 104.2.

(2) A copy of the notice of election must also be filedwith the Patent Trial and Appeal Board in the manner providedin § 42.6(b).

(3) A copy of the notice of election must also be servedwhere necessary pursuant to § 42.6(e).

(c) For a civil action under 35 U.S.C. 146. The partyinitiating an action under 35 U.S.C. 146 must file a copy of thecomplaint no later than five business days after filing thecomplaint in district court with the Patent Trial and AppealBoard in the manner provided in § 42.6(b), and the Office ofthe Solicitor pursuant to § 104.2. Failure to comply with thisrequirement can result in further action within the United StatesPatent and Trademark Office consistent with the final Boarddecision.

37 CFR 90.3 Time for appeal or civil action.

(a) Filing deadline.

(1) For an appeal under 35 U.S.C. 141. The notice ofappeal filed pursuant to 35 U.S.C. 142 must be filed with theDirector of the United States Patent and Trademark Office nolater than sixty-three (63) days after the date of the final Boarddecision. Any notice of cross-appeal is controlled by Rule 4(a)(3)of the Federal Rules of Appellate Procedure, and any otherrequirement imposed by the Rules of the United States Courtof Appeals for the Federal Circuit.

(2) For a notice of election under 35 U.S.C. 141(d).The time for filing a notice of election under 35 U.S.C. 141(d)is governed by 35 U.S.C. 141(d).

(3) For a civil action under 35 U.S.C. 145 or 146.

(i) A civil action must be commenced no later thansixty-three (63) days after the date of the final Board decision.

(ii) The time for commencing a civil actionpursuant to a notice of election under 35 U.S.C. 141(d) isgoverned by 35 U.S.C. 141(d).

(b) Time computation.

(1) Rehearing. A timely request for rehearing willreset the time for appeal or civil action to no later thansixty-three (63) days after action on the request. Any subsequentrequest for rehearing from the same party in the same proceedingwill not reset the time for seeking judicial review, unless theadditional request is permitted by order of the Board.

(2) Holidays. If the last day for filing an appeal or civilaction falls on a Federal holiday in the District of Columbia, thetime is extended pursuant to 35 U.S.C. 21(b).

(c) Extension of time.

(1) The Director, or his designee, may extend the timefor filing an appeal, or commencing a civil action, upon writtenrequest if:

(i) Requested before the expiration of the periodfor filing an appeal or commencing a civil action, and upon ashowing of good cause; or

(ii) Requested after the expiration of the period forfiling an appeal of commencing a civil action, and upon ashowing that the failure to act was the result of excusableneglect.

(2) The request must be filed as provided in § 104.2 ofthis title.

I. JUDICIAL REVIEW OF PATENTAPPLICATIONS

An applicant for a patent who is dissatisfied with afinal written decision of the Board (other than adecision of the Board in a derivation proceeding)may seek judicial review either by an appeal to theU.S. Court of Appeals for the Federal Circuit (35U.S.C. 141) or by a civil action in the U.S. DistrictCourt for the Eastern District of Virginia (35 U.S.C.145). By filing an appeal to the U.S. Court ofAppeals for the Federal Circuit, the applicant waivesthe right to seek judicial review by a civil actionunder 35 U.S.C. 145. See 35 U.S.C. 141.

II. JUDICIAL REVIEW OF REEXAMINATIONPROCEEDINGS

A patent owner who is not satisfied with the finalwritten decision of the Board in an ex partereexamination may seek judicial review of theBoard's decision only by appealing the decision ofthe Board to the U.S. Court of Appeals for theFederal Circuit pursuant to 35 U.S.C. 141. 35 U.S.C.306.

Because inter partes reexamination procedures arefound in Chapter 31 (and not in Chapter 30) of Title35 of the United States Code, 35 U.S.C. 306 doesnot apply to an inter partes reexaminationproceeding. Instead, pre-AIA 35 U.S.C. 315continues to apply to inter partes reexaminationproceedings. See Leahy-Smith America Invents Act,Pub. L. No. 112-29 § 6(c)(3)(C) and 37 CFR 90.1.

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Accordingly, the regulations in effect on July 1, 2012govern judicial review of such proceedings, and thisMPEP section does not apply to them. See MPEP §2683 for further information regarding judicialreview of inter partes reexamination proceedings.

III. JUDICIAL REVIEW OF INTER PARTESREVIEW, POST-GRANT REVIEW, COVEREDBUSINESS METHOD REVIEW, AND DERIVATIONPROCEEDINGS

A party dissatisfied with the final written decisionof the Board in an inter partes review, post-grantreview, or covered business method reviewproceeding may seek judicial review only byappealing the decision to the United States Court ofAppeals for the Federal Circuit pursuant to 35 U.S.C.141. See 35 U.S.C. 319 and 35 U.S.C. 329.

A party dissatisfied with the final written decisionof the Board in a derivation proceeding may seekjudicial review either by appealing the decision tothe United States Court of Appeals for the FederalCircuit pursuant to 35 U.S.C. 141 or filing a civilaction pursuant to 35 U.S.C. 146. An adverse partyin a derivation proceeding appealed to the FederalCircuit may elect to have further judicial reviewproceedings conducted under 35 U.S.C. 146 instead.

Any notice of appeal filed in an inter partes review,post-grant review, covered business method review,or derivation proceeding must provide sufficientinformation to allow the Director to determinewhether to exercise the right to intervene in theappeal pursuant to 35 U.S.C. 143. See 37 CFR90.2(a)(3)(ii).

IV. TIME FOR FILING NOTICE OF APPEAL ORCOMMENCING CIVIL ACTION

The time for filing a notice of a 35 U.S.C. 141 appealto the U.S. Court of Appeals for the Federal Circuitor for commencing a civil action under 35 U.S.C.145 is within 63 days of the Board’s decision. 37CFR 90.3(a). The time for filing a notice of election,and for commencing a civil action pursuant to anotice of election, in an appeal from a derivationproceeding is governed by 35 U.S.C. 141(d). See 37CFR 90.2(a)(2). However, if a timely request forrehearing of the Board’s decision is filed, the time

for filing a notice of appeal to the U.S. Court ofAppeals for the Federal Circuit or for commencinga civil action expires 63 days after a decision on arequest for rehearing or reconsideration (37 CFR90.3(b)(1)).

The times specified in 37 CFR 90.3 are calendardays. If the last day of the time specified for appealor commencing a civil action falls on a Federalholiday in the District of Columbia, the time isextended to the next day which is neither a Saturday,Sunday, nor a Federal holiday (37 CFR 90.3(b)(2)).

V. TIME FOR FILING CROSS-APPEAL ORCROSS-ACTION

Any notice of cross-appeal is controlled by Rule4(a)(3) of the Federal Rules of Appellate Procedure,and any other requirement imposed by the Rules ofthe U.S. Court of Appeals for the Federal Circuit.See 37 CFR 90.3(a)(1).

VI. EXTENSION OF TIME TO SEEK JUDICIALREVIEW

In 37 CFR 90.3(c), the Office has adopted a standardwhich is similar to the standard used in the Federalcourts for granting extensions. Under the rule, theDirector may extend the time (A) for good cause ifrequested before the expiration of the time providedfor initiating judicial review or (B) upon a showingof excusable neglect in failing to initiate judicialreview if requested after the expiration of the timeperiod. This standard is applicable once the “last”decision has been entered, i.e., either the decision(in circumstances where no timely rehearing issought) or the decision on rehearing of the Board inan ex parte appeal. Extensions of time under 37CFR 1.136(b) and 37 CFR 1.550(c) and feeextensions under 37 CFR 1.136(a) are not availableto extend the time for the purpose of seeking judicialreview once a decision or a decision on rehearinghas been entered.

Requests for extension of time to seek judicialreview under 37 CFR 90.3(c) should be addressedor served as provided in 37 CFR 104.2. In addition,to expedite the handling of such a request, a copy ofthe request may be provided to the Office of theSolicitor as follows:

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Mail Stop 8Office of the SolicitorUnited States Patent and Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

A copy of the request may also be hand-carried tothe Office of the Solicitor.

VII. APPLICATION UNDER JUDICIAL REVIEW

The administrative file of an application underjudicial review will not be opened to the public bythe U.S. Patent and Trademark Office, unless it isotherwise available to the public under 37 CFR 1.11.

During judicial review, the involved application orreexamination is not under the jurisdiction of theexaminer or the Board, unless remanded to the U.S.Patent and Trademark Office by the court. Anyamendment can be admitted only under theprovisions of 37 CFR 1.198. See MPEP § 1214.07.

VIII. SERVICE OF COURT PAPERS ON THEDIRECTOR

See MPEP § 1216.01 for the proper way to effectservice on the Director of a notice of appeal to theU.S. Court of Appeals for the Federal Circuit. SeeMPEP § 1216.02 for the proper way to effect serviceon the Director of a complaint in a civil action.

Rule 5(b) of the Federal Rules of Civil Procedureprovides that if a party is represented by an attorney,service under this rule must be made on the attorneyunless the court orders service on the party. The rulesets forth proper ways to serve papers, includingdelivering papers to the person or the person's office,or mailing papers to the person's last known address.

Similarly, Rule 25(b) of the Federal Rules ofAppellate Procedure provides that “[s]ervice on aparty represented by counsel must be made on theparty’s counsel.”

Accordingly, all service copies of papers filed incourt proceedings in which the Director is a partymust be served on the Office of the Solicitor. Serviceon the Office of the Solicitor may be effected ineither of the following ways:

(A) By hand between 8:30 A.M. and 5:00 P.M.EST to the Office of the Solicitor at 600 DulanyStreet, Madison West Building, Room 8C43,Alexandria, VA 22314.

(B) By mail in an envelope addressed as follows:Mail Stop 8Office of the SolicitorUnited States Patent and Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

While the above mail service address may besupplemented to include the name of the particularattorney assigned to the court case, it must not besupplemented to refer to either the Director or theU.S. Patent and Trademark Office.

Any court papers submitted to the U.S. Patent andTrademark other than by mail to the above mailservice address or delivered by hand to the Officeof the Solicitor are deemed to have been served onthe Director when actually received in the Office ofthe Solicitor.

The above mail service address should not be usedfor noncourt papers, i.e., papers which are intendedto be filed in the U.S. Patent and Trademark Officein connection with an application or other proceedingpending in the U.S. Patent and Trademark Office.ANY NONCOURT PAPERS WHICH AREMAILED TO THE ABOVE MAIL SERVICEADDRESS WILL BE RETURNED TO THESENDER. NO EXCEPTIONS WILL BE MADETO THIS POLICY.

1216.01 Appeals to the U.S. Court of Appealsfor the Federal Circuit [R-08.2017]

35 U.S.C. 142 Notice of appeal.

When an appeal is taken to the United States Court of Appealsfor the Federal Circuit, the appellant shall file in the Patent andTrademark Office a written notice of appeal directed to theDirector, within such time after the date of the decision fromwhich the appeal is taken as the Director prescribes, but in nocase less than 60 days after that date.

35 U.S.C. 143 Proceedings on appeal.

With respect to an appeal described in section 142, the Directorshall transmit to the United States Court of Appeals for theFederal Circuit a certified list of the documents comprising therecord in the Patent and Trademark Office. The court mayrequest that the Director forward the original or certified copies

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of such documents during the pendency of the appeal. In an exparte case, the Director shall submit to the court in writing thegrounds for the decision of the Patent and Trademark Office,addressing all of the issues raised in the appeal. The Directorshall have the right to intervene in an appeal from a decisionentered by the Patent Trial and Appeal Board in a derivationproceeding under section 135 or in an inter partes or post-grantreview under chapter 31 or 32.

35 U.S.C. 144 Decision on appeal.

The United States Court of Appeals for the Federal Circuit shallreview the decision from which an appeal is taken on the recordbefore the Patent and Trademark Office. Upon its determinationthe court shall issue to the Director its mandate and opinion,which shall be entered of record in the Patent and TrademarkOffice and shall govern the further proceedings in the case.

Filing an appeal to the U.S. Court of Appeals for theFederal Circuit requires that the applicant (A) filein the U.S. Patent and Trademark Office a writtennotice of appeal (35 U.S.C. 142) directed to theDirector; (B) file a copy of the notice of appeal withthe Board in the manner provided in 37 CFR41.10(a), 41.10(b), or 42.6(b), as appropriate; and(C) file with the Clerk of the Federal Circuit a copyof the notice of appeal and pay the docket fee forthe appeal, as provided by Federal Circuit Rule 52.37 CFR 90.2(a).

Additionally, the owner of a patent involved in an ex parte reexamination proceeding must complywith these requirements, and additionally must alsoserve the notice of appeal as provided in 37 CFR1.550(f). 37 CFR 90.2(a)(3)(i). A party appealingthe Board’s decision in an inter partes review,post-grant review, covered business method patentreview, or derivation proceeding must includesufficient information in the notice of appeal to allowthe Director to determine whether to exercise theright to intervene in the appeal pursuant to 35 U.S.C.143, and must serve the notice of appeal as providedin 37 CFR 42.6(e).

An adverse party in a derivation proceeding appealedto the U.S. Court of Appeals for the Federal Circuitelecting to have further judicial review proceedingsconducted under 35 U.S.C. 146 must file a notice ofelection under 35 U.S.C. 141(d) with the Office asprovided in 37 CFR 104.2. Such a party must alsofile a copy of the notice of election with the Boardin the manner provided in 37 CFR 42.6(b), and,

where necessary, must serve a copy of the notice ofelection pursuant to 37 CFR 42.6(e).

For a notice of appeal to be considered timely filedin the U.S. Patent and Trademark Office, it must:(A) actually reach the U.S. Patent and TrademarkOffice within the time specified in 37 CFR 90.3(including any extensions) or (B) be mailed withinthe time specified in 37 CFR 90.3 (including anyextensions) by Priority Mail Express® in accordancewith 37 CFR 1.10.

A Notice of Appeal to the U.S. Court of Appeals forthe Federal Circuit should not be mailed to theDirector, the Board or the examiner. Nor should itbe mailed to the Office of the Solicitor’s mail serviceaddress for court papers given in MPEP § 1216.Instead, it should be filed in the U.S. Patent andTrademark Office in any one of the following ways:

(A) By mail addressed to the mailing addressprovided in 37 CFR 104.2(a), in which case thenotice of appeal must actually reach the U.S. Patentand Trademark Office by the due date.

(B) By Priority Mail Express® under 37 CFR1.10 addressed to the mailing address provided in37 CFR 104.2(a), in which case the notice of appealis deemed filed on the “date-accepted” on thePriority Mail Express® mailing label.

(C) By hand as provided in 37 CFR 104.2(b).

A copy of the notice of appeal and the docket feeshould be filed with the Clerk of the U.S. Court ofAppeals for the Federal Circuit, whose mailing andactual address is:

U.S. Court of Appeals for the Federal Circuit717 Madison Place, N.W.Washington, DC 20439

The Solicitor, prior to a decision by the U.S. Courtof Appeals for the Federal Circuit, may request thatthe case be remanded to the U.S. Patent andTrademark Office and prosecution reopened. SeeMPEP § 1214.07.

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I. OFFICE PROCEDURE FOLLOWING DECISIONBY THE U.S. COURT OF APPEALS FOR THEFEDERAL CIRCUIT

After the U.S. Court of Appeals for the FederalCircuit has heard and decided the appeal, the Clerkof the U.S. Court of Appeals for the Federal Circuitforwards to the U.S. Patent and Trademark Office acertified copy of the court’s decision. This certifiedcopy is known as the “mandate.” The mandate isentered in the file of the application, reexaminationor interference which was the subject of the appeal.The date the mandate was issued by the FederalCircuit marks the conclusion of the appeal, i.e., thetermination of proceedings as that term is used in35 U.S.C. 120. See 37 CFR 1.197.

The U.S. Court of Appeals for the Federal Circuit’sopinion may or may not be precedential. Whetheror not the opinion is precedential, the U.S. Patentand Trademark Office will not give the public accessto the administrative record of an involvedapplication unless it is otherwise available to thepublic under 37 CFR 1.11. However, since the courtrecord in a 35 U.S.C. 141 appeal generally includesa copy of at least part of the application, theapplication may be inspected at the Federal Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 140 (CCPA1957).

A. All Claims Rejected

If all claims in the case stand rejected, proceedingsin the case are considered terminated on the issuedate of the U.S. Court of Appeals for the FederalCircuit’s mandate. Because the case is no longerconsidered pending, it is ordinarily not open tosubsequent amendment and prosecution by theapplicant. Continental Can Company v. Schuyler,326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970).However, exceptions may occur where the mandateclearly indicates that further action in the U.S. Patentand Trademark Office is to be taken in accordancewith the U.S. Court of Appeals for the FederalCircuit’s opinion.

B. Some Claims Allowed

Where the case includes one or more allowed claims,including claims allowed by the examiner prior to

appeal and claims whose rejections were reversedby either the Board or the court, the proceedings areconsidered terminated only as to any claims whichstill stand rejected. It is not necessary for theapplicant or patent owner to cancel the rejectedclaims, since they may be canceled by the examinerin an examiner’s amendment. Thus, if no formalmatters remain to be attended to, the examiner willpass the application to issue forthwith on the allowedclaims or, in the case of a reexamination, will issuea “Notice of Intent to Issue a ReexaminationCertificate.” See MPEP § 2287. The examiner shouldset forth the reasons for allowance, referring to andincorporating a copy of the appellate brief and thecourt decision. See MPEP § 1302.14.

If formal matters remain to be attended to, theexaminer promptly should take appropriate actionon such matters, such as by an examiner’samendment or by an Office action setting a 1-month(but not less than 30-day) shortened statutory periodfor reply. However, the application or reexaminationproceeding is considered closed to furtherprosecution except as to such matters.

C. Remand

Where the decision of the court brings up for actionon the merits claims which were not previouslyconsidered on the merits (such as a decisionreversing a rejection of generic claims in anapplication containing claims to nonelected species),the examiner will take the case up for appropriateaction on the matters thus brought up.

D. Reopening of Prosecution

In some situations it may be necessary to reopenprosecution of an application after a court decision.Any Office action proposing to reopen prosecutionafter a court decision must be forwarded to the Officeof the Deputy Commissioner for Patent ExaminationPolicy for written approval, which will be indicatedon the Office action.

II. DISMISSAL OF APPEAL

After an appeal is docketed in the U.S. Court ofAppeals for the Federal Circuit, failure to prosecutethe appeal, such as by appellant’s failure to file a

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brief, may result in dismissal of the appeal by thecourt. Under particular circumstances, the appealalso may be dismissed by the court on motion of theappellant and/or the Director.

The court proceedings are considered terminated asof the date of the mandate. After dismissal, the actiontaken by the examiner will be the same as set forthabove under the heading “Office ProcedureFollowing Decision by the U.S. Court of Appealsfor the Federal Circuit.”

In the event of a dismissal for a reason other thanfailure to prosecute the appeal, the status of theapplication or reexamination proceeding must bedetermined according to the circumstances leadingto the dismissal.

1216.02 Civil Suits Under 35 U.S.C. 145 and146 [R-11.2013]

A civil action under 35 U.S.C. 145 or 146 iscommenced by filing a complaint in the U.S. DistrictCourt for the Eastern District of Virginia within thetime specified in 37 CFR 90.3(a)(3)(i) (see MPEP§ 1216). Furthermore, copies of the complaint andsummons must be served in a timely manner on theDirector, the U.S. Attorney for the District ofColumbia, and the Attorney General in the mannerset forth in Rule 4(i) of the Federal Rules of CivilProcedure. All the expenses of the proceedings shallbe paid by the applicant (see 35 U.S.C. 145).

The party initiating an action under 35 U.S.C. 146must also file a copy of the complaint with the Boardin the manner provided in 37 CFR 42.6(b) no laterthan five days after filing the complaint in districtcourt. 37 CFR 90.2(c). Failure to comply with thisrequirement can result in further action within theOffice consistent with the final Board decision.

In an action under 35 U.S.C. 145, the plaintiff mayintroduce evidence not previously presented to theU.S. Patent and Trademark Office. However,plaintiff will be precluded from presenting newissues. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir.2010) (en banc), aff’d, 132 S. Ct. 1690 (2012); DeSeversky v. Brenner, 424 F.2d 857, 858, 164USPQ 495, 496 (D.C. Cir. 1970).

Upon termination of the civil action, a statement ofthe court’s final disposition of the case is placed inthe electronic file, which is then returned to theexaminer for action in accordance with the sameprocedures as follow termination of a 35 U.S.C. 141appeal. See MPEP § 1216.01. 37 CFR 1.197(b)provides that a civil action is terminated when thetime to appeal the judgment expires. Where the exactdate when the civil action was terminated is material,the date may be ascertained from the Office of theSolicitor.

The procedures to be followed in the U.S. Patentand Trademark Office after a decision, remand, ordismissal of the case by the district court are thesame as the procedures followed with respect to 35U.S.C. 141 appeals. See MPEP § 1216.01.

Any subpoena by the district court for an applicationor reexamination file should be hand-carried to theOffice of the Solicitor.

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