A. Effective Date (September 13, 2004); A11 added 19Oct2004; A12 added 4Jan2005.
B. Time Periods for Filing Appeal Brief and Response to Examiner's Answer
C. Amendments and Affidavits or Other Evidence (§ 1.116 and § 41.33); C7, C8 and C9 added 9Sept2005
D. Notice of Appeal (§ 41.31); D3 updated 4Jan2005.
E. Appeal Brief (§ 41.37)
F. Examiner's Answer (Including New Ground of Rejection) (§ 41.39)
G. Reply Brief (§41.41)
H. Supplemental Examiner's Answer (§ 41.43)
I. Other Topics
A. Effective Date (September 13, 2004)
Questions related to Time Periods for Filing of Papers:
A1. If a notice of appeal is filed before September 13, 2004, the effective date of the BPAI final rule, when is the appeal brief due?
If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal; or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.
The time period set forth in former § 1.192(a) also applies if the notice of appeal is filed with a certificate of mailing or transmission in compliance with § 1.8 and the date on the certificate of mailing or transmission is before the effective date of September 13, 2004, but the notice of appeal is received by the Office on or after September 13, 2004. The two month time period will begin on the date of receipt of the notice of appeal.
A2. If appellant reinstates the appeal after the prosecution is reopened by filing a second notice of appeal on or after the effective date, when is the second appeal brief due?
Appellant must file the second appeal brief (in compliance with the format and content requirements of § 41.37(c)) within two months from the date of filing the second notice of appeal, even if the first notice of appeal and the first brief were filed before the effective date. The two month time period is extendable under the provisions of § 1.136 for patent applications and § 1.550(c) for ex parte reexamination proceedings. See § 41.37(e).
A3. If a notice of appeal is filed on or after the effective date of September 13, 2004, would extensions of time under § 1.136(a) be required when a Request for Continued Examination (RCE) under § 1.114 or an amendment is filed after two months from the date of filing the notice of appeal, but within three months from the mailing of the action from which the appeal was taken?
Yes, extensions of time under § 1.136(a) are required for filing an RCE or amendment after two months from the filing of the notice of appeal, even if the RCE or amendment is filed within the three months from the mailing of the action from which the appeal was taken.
Questions related to Appeal Brief Contents or Requirements for Papers Filed after Appeal:
A4. If the notice of appeal is filed before the effective date of September 13, 2004 and the brief is filed by appellant on or after the effective date, would the appeal brief be required to comply with the content and format requirements of § 41.37(c)?
Yes, any appeal brief filed on or after September 13, 2004 must be in compliance with the requirements set forth in § 41.37(c) and be accompanied by the appropriate fee under § 41.20(b)(2). If the brief does not comply with § 41.37(c), an amended brief will be required under § 41.37(d).
Exception: If the appeal brief is filed with a certificate of mailing or transmission under § 1.8 and the date on the certificate of mailing or transmission is before September 13, 2004, the appeal brief may comply with either former § 1.192 or new § 41.37, even if the appeal brief is received by the Office on or after September 13, 2004.
A5. Would the Office accept an appeal brief filed before the effective date of September 13, 2004 that is in compliance with § 41.37(c)?
Yes, a brief filed before September 13, 2004 that is compliant with the new § 41.37(c) will be acceptable.
A6. If an appeal brief filed before the effective date of September 13, 2004 fails to comply with the content and format requirements of § 1.192 and the Office mails appellant a Notice that correction is required, would an amended appeal brief filed on or after the effective date be required to be in compliance with § 41.37(c)?
No, an amended appeal brief, based on an appeal brief originally filed prior to September 13, 2004, would be acceptable if it complies with either former § 1.192 or § 41.37(c), regardless of when the Office mailed a Notice requiring correction of the noncompliant appeal brief.
A7. If, after a final rejection or an appeal, applicant or appellant files an amendment, affidavit or other evidence on or after the effective date, will the revised or new rules in the BPAI Final Rule apply?
Any affidavit or other evidence filed after a final rejection, or an appeal, on or after the effective date, will be subject to the revised or new rules (i.e., the revised § 1.116 or new § 41.33).
Questions related to Examiner’s Answers and Supplemental Examiner’s Answers:
A8. If the appeal brief is filed before the effective date of September 13, 2004, but the examiner’s answer is mailed on or after the effective date, can the examiner’s answer include a new ground of rejection?
Yes, an examiner’s answer mailed on or after September 13, 2004 may include a new ground of rejection (with Technology Center Director or designee approval) in compliance with § 41.39. Any examiner’s answer mailed before September 13, 2004, however, may not include a new ground of rejection. See former § 1.193.
A9. Can the examiner provide a supplemental examiner’s answer under § 41.43 on or after the effective date of September 13, 2004 in response to any new issue raised in a reply brief that was filed before the effective date?
Yes, the examiner may provide a supplemental examiner’s answer (with Technology Center Director or designee approval) if it is mailed on or after September 13, 2004 in response to any new issue raised in a reply brief, even if the reply brief was filed before September 13, 2004. Appellant may file another reply brief in compliance with § 41.41 to reply to the supplemental examiner’s answer within two months from the date of mailing of the supplemental examiner’s answer. Extensions of time under § 1.136(a) are not applicable to the two-month time period.
A10. If the Board remanded an application before the effective date of September 13, 2004 for further consideration of a rejection, and the examiner provides a supplemental examiner’s answer on or after the effective date (in response to the remand by the Board), can appellant request that prosecution be reopened under § 41.50(a)(2)(i)?
No, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) in response to the supplemental examiner’s answer since the Board remanded the application before the effective date. Appellant may request that prosecution be reopened in response to a supplemental examiner’s answer written in response to the remand by the Board, only if: (1) the remand is on or after the effective date, and (2) the remand is for further consideration of a rejection. The Board should indicate in the remand if § 41.50(a)(2)(i) applies. Thus, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) if the remand is for another reason.
A11. If an appellant filed an appeal brief in compliance with the requirements of former 37 CFR 1.192(c) before September 13, 2004, the effective date, but the fee for the brief was filed on or after September 13, 2004 within the time period under former 37 CFR 1.192(a), would the appellant have to file an amended brief in compliance with 37 CFR 41.37(c)? [added 19Oct2004]
No, the Office will accept an appeal brief filed before September 13, 2004, that complies with either former 37 CFR 1.192(c) or new 37 CFR 41.37(c), even if the fee for the brief was timely filed on or after September 13, 2004.
A12. Appellant filed an appeal brief prior to September 13, 2004, the effective date of the BPAI final rule. The examiner reopened the prosecution and issued a non-final Office action with a new ground of rejection prior to September 13, 2004. Can the appellant reinstate the appeal by filing a reply brief that addresses the new ground of rejection? [added 4Jan2005]
Yes, appellant may reinstate the appeal by filing a reply brief that addresses the new ground of rejection. The appeal can also be reinstated by filing a complete new brief in compliance with 37 CFR 41.37. If instead of the Office action being mailed prior to September 13, 2004, the Office action was mailed on or after September 13, 2004, appellant cannot reinstate the appeal by filing a reply brief that addresses the new ground of rejection but instead can only be reinstated by filing a complete new brief in compliance with 37 CFR 41.37.
B. Time Periods for Filing Appeal Brief, Response to Examiner’s Answer, etc.
B1. If the appellant files a notice of appeal with a certificate of mailing under 37 CFR 1.8, which date (the date on the certificate of mailing or the date of receipt by the Office) will start the two month time period for filing the brief?
The date of receipt by the Office (or date of deposit with the USPS as set forth in 37 CFR 1.10) of the notice of appeal will be used as the date of filing the notice of appeal as set forth in 37 CFR 41.37(a). See MPEP § 512. The brief is required to be filed within two months from the date of filing the notice of appeal. The time period allowed for reply to the action from which the appeal was taken is no longer relevant. Appellant may petition for extensions of time under 37 CFR 1.136(a) for patent applications or 37 CFR 1.550(c) for reexamination proceedings.
B2. Will extensions of time be available for filing an appeal brief, a reply in response to a new ground of rejection in an examiner’s answer, and a reply brief for a patent application?
Time period for filing | Are extensions of time under § 1.136(a) available for patent applications | Are extensions of time under § 1.136(b) available for patent applications? | Are extensions of time under § 1.550(c) available for ex parte reexamination proceedings? | |
|---|---|---|---|---|
| Appeal brief | Two (2) months from the receipt date of a notice of appeal (see § 41.37(a)(1)). | Yes, up to five (5) months after the two month time period for filing the brief (see § 41.37(e)). | Yes (see § 41.37(e)). | Yes (see § 41.37(e)). |
| Amended appeal brief filed in response to a notice of non-compliant appeal brief | Thirty (30) days or one (1) month, whichever is longer, from the date of mailing a notice of non-compliant appeal brief (see § 41.37(d)). | Yes, up to five (5) months after the 30 days or 1 month time period for filing the amended brief (see § 41.37(e)). | Yes (see § 41.37(e)). | Yes (see § 41.37(e)) |
| A reply under §1.111 or a reply brief in response to a new ground of rejection in an examiner’s answer | Two (2) months from the date of mailing of the examiner’s answer (see § 41.39(b)). | No (see § 41.39(c)). | Yes (see § 41.39(c)). | Yes (see § 41.39(c)) |
| A reply brief under §41.41 or §41.43 | Two (2) months from the date of mailing of the examiner’s answer (see § 41.41(a)(1) or § 41.43(b)). | No (see § 41.41(c) or § 41.43(c)). | Yes (see § 41.41(c) or §41.43(c)) | Yes(see § 41.41(c) or §41.43(c)) |
| A reply under §1.111 or a reply brief in response to a supplemental examiner’s answer written in response to a remand by the Board for further consideration of a rejection under §41.50(a)(2). | Two (2) months from the date of mailing of the supplemental examiner’s answer (see § 41.50(a)(2)). | No (see § 41.50(f)). | Yes (see § 41.50(f)). | Yes (see § 41.50(f)). |
37 CFR 1.136(b) provides that when a reply cannot be filed within the time period set for such reply and § 1.136(a) is not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under § 1.136(b) must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.
37 CFR 1.550(c) provides that the time for taking any action by a patent owner in an ex parte reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.
C. Amendments and Affidavits or Other Evidence
C1. What are the different standards for admitting an amendment, or affidavit or other evidence filed after a final rejection in a patent application?
Filed after a final rejection, but before or on the date of filing a notice of appeal | Filed after the date of filing a notice of appeal, but prior to the date of filing an appeal brief | Filed on or after the date of filing an appeal brief | |
|---|---|---|---|
| Amendments | May be admitted only to: | May be admitted as provided in § 1.116(b). See § 41.33(a) and previous column. | May be admitted only to: · Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or · Rewrite dependent claims into independent form. See § 41.33(b). |
| Affidavits or Other evidence | May be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See §1.116(e). | May be admitted if it: · Overcomes all rejections under appeal; and · Upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See §41.33(d)(1). | Affidavits or other evidence may not be admitted. See §41.33(d)(2). |
C2. What are some of the examples of “other evidence” under § 1.116(e) and § 41.33(d)?
The term, “other evidence,” includes: declarations and exhibits, but it does not include information disclosure statements (IDS).
C3. If an amendment is filed with a notice of appeal after a second non-final Office action (and not a final rejection), which rule applies to the amendment?
37 CFR 1.111 would apply to such an amendment. 37 CFR 1.116 would not apply since it is limited to amendments and affidavits or other evidence filed after final action and prior to or with any appeal. If the amendment were filed after a notice of appeal, 37 CFR 41.33 would apply.
C4. Would the examiner need to send out an advisory action in reply to an affidavit or other evidence that is denied entry?
Yes. The examiner must notify applicant as to whether or not the paper is entered for purposes of appeal.
C5. What happens if the applicant does make a showing that there is good and sufficient reasons for entry of an affidavit or other evidence filed after a notice of appeal but prior to the appeal brief, but the affidavit or other evidence only removes one of the grounds of rejection (e.g., removes the rejection under 35 U.S.C. 103(a) of claims 6-10, but not the rejection under 35 U.S.C. 102(a) of claims 1-5)?
Such an affidavit or other evidence will not be entered for purposes of appeal since it does not overcome all rejections under appeal. 37 CFR 41.33(d)(1).
C6. If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final action, which rule applies to determine whether such an amendment may be admitted?
Section 1.116 applies in this situation. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
C7. If applicant filed a reply under 37 CFR 1.111 in response to a second non-final rejection and filed a notice of appeal before the Office considers the reply and makes another rejection, would such a notice of appeal be proper? [posted 9Sept2005]
Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CFR 1.111 rather than only appealing from the second non-final rejection, the notice of appeal is premature for the following reasons:
(1) The Office has not had the opportunity to consider the reply under 37 CFR 1.111 and issue an Office action in view of the reply (note that this is different than after-final situations where a reply under 37 CFR 1.116 is not entered as matter of right and applicant is appealing from the final rejection);
(2) The status of the claims are uncertain as to whether the examiner would reject the claims again in view of the reply (e.g., the appeal would be unnecessary if the reply places the claims in condition for allowance);
(3) The grounds of rejection are uncertain as to whether the examiner would apply the same grounds of rejection made in the second non-final rejection or make a new ground of rejection with or without using a new prior art reference;
(4) It is unclear which “decision” by the examiner applicant is appealing from because the second non-final rejection may no longer be relevant in view of the reply under 37 CFR 1.111 and the examiner has not issued another decision in response to the reply under 37 CFR 1.111; and
(5) A two-month time period for filing an appeal brief cannot be running against the applicant when applicant cannot determine whether the claims are under rejection again and which grounds of rejection would apply to the claims.
Accordingly, a notice of appeal is prematurely filed, and is thus defective when it is filed after a reply under 37 CFR 1.111 but before the Office issues another Office action in view of the reply. Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action mailed in response to the reply applicant may file another notice of appeal under 37 CFR 41.31. (Similarly, a notice of appeal is defective if it is filed on the same day as the reply under 37 CFR 1.111 or a request for continued examination (RCE) under 37 CFR 1.114. See Questions and Answers C8 and C9.)
Any previously paid fees for the first notice of appeal will be applied to the new notice of appeal. If, however, the appeal fee has increased, applicant is required to pay the difference between the current fee and the amount previously paid at the time of filing the second notice of appeal. Any patent term adjustment determination for a successful appellate review will begin on the date of the new notice of appeal and not on the date of the defective notice of appeal.
C8. If a reply is filed with a notice of appeal in response to a second non-final rejection, how would the Office treat the reply and the notice of appeal? [posted 9Sept2005]
The Office will treat the reply under 37 CFR 1.111. For example, if the reply is a fully responsive reply to the second non-final rejection that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be entered and considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the reply under 37 CFR 1.111. See Question and Answer C7.
C9. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a submission and a notice of appeal after the mailing of a final Office action, how would the Office treat the RCE and the notice of appeal? [posted 9Sept2005]
If the RCE is accompanied by a proper submission and fee, the Office will enter the RCE and the submission, and reopen prosecution. If the submission is a fully responsive reply that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the RCE submission. See Question and Answer C7.
D1. If at least one of the claims in a patent application is rejected for the second time but not finally rejected in a non-final Office action, can applicant appeal the rejections set forth in the non-final Office action by filing a notice of appeal?
Yes, § 41.31 provides that an applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period for reply provided in the non-final Office action.
D2. If prosecution is reopened and a subsequent appeal is taken, will applicant be required to again file a notice of appeal and an appeal brief and pay the notice of appeal and appeal brief fees?
If appellant wishes to file a second appeal, appellant must file a second notice of appeal and an appeal brief in compliance with § 41.37(c)(1). Once the notice of appeal and appeal brief fees have been paid, however, a second set of notice of appeal and appeal brief fees will not be required except if a final Board decision has been made on the first appeal. See Rules of Practice Before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49959 [PDF], 49975 (August 12, 2004) (final rule)), answer to Comment 44. If, however, the fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.
D3. How does an applicant reinstate an appeal? [updated 4Jan2005]
An applicant can reinstate an appeal by filing a second notice of appeal in compliance with 37 CFR 41.31 and a complete new brief in compliance with 37 CFR 41.37. Any fees paid for the notice of appeal, appeal brief, and request for an oral hearing (if applicable) will be applied to the reinstated or second appeal on the same application as long as a final Board decision has not been made on the first appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.
E1. If appellant only presents arguments for a dependent claim but not for the independent claim in a group of claims that are subject to the same ground of rejection (e.g., appellant only argues that the reference cited does not show one of the limitations of the dependent claim, but it is not a limitation of the independent claim), how should the examiner treat the independent claim in the examiner’s answer?
The examiner should fully explain how the limitations of the independent claim are rejected and address the appellant’s arguments regarding the dependent claim.
E2. Does the examiner have to check the claims presented in the claims appendix?
Yes, the examiner should check the claims presented in the claims appendix to the extent that the examiner has a reasonable assurance that the correct claims are set forth in the appendix.
E3. If appellant fails to include a copy of the claims involved in the appeal in the claims appendix section of the appeal brief or the claims in the appendix are not the correct claims, can the examiner provide an accurate copy of the claims on appeal in an appendix to the examiner’s answer?
Yes, the examiner may provide a copy of the claims involved in the appeal in an appendix to the examiner’s answer, or object to the appeal brief and require appellant to provide the claims appendix.
F. Examiner's Answer (Including New Ground of Rejection (§ 41.39)
F1. If the appellant requests that the prosecution be reopened by filing a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, can the examiner make the next Office action final?
Yes, the examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a).
F2. Can the Office deny a request to reopen prosecution under § 41.39(b)(1) when appellant files a reply in compliance with § 1.111 in response to a new ground of rejection in an examiner’s answer?
No, if appellant files a reply in compliance with § 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen the prosecution by entering and considering the reply.
F3. How should the examiner treat a request to reopen prosecution under § 41.39(b)(1) that is accompanied by a non-responsive reply?
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner’s answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired.
F4. If an examiner indicates in the advisory action that the amendment after final rejection will be entered for purposes of appeal, and the advisory action indicates which rejection set forth in the action from which appeal has been taken would be used to reject the added or amended claims (this is the exception provided in former § 1.193(a)(2)), would such a rejection be considered a new ground of rejection when it is included in an examiner’s answer?
No, such a rejection will not be considered a new ground of rejection in an examiner’s answer. If such a rejection is included in an examiner’s answer, the examiner will not be required to obtain the approval of the TC Director or designee, and appellant will not have the right to request that prosecution be reopened.
F5. If appellant alleges that a rejection in an examiner’s answer is a new ground of rejection, but the examiner did not designate the rejection as a new ground of rejection, can the appellant file a petition under § 1.181 for the TC Director’s supervisory review of the examiner’s answer?
Yes, appellant may file a petition under § 1.181 within two months from the mailing of the examiner’s answer (see § 1.181(f)). The petition should include reasons why the rejection should be designated as a new ground of rejection. No petition fee is required. Any allegation that an examiner’s answer contains a new ground of rejection but not designated as such is waived if not timely (§ 1.181(f)) raised by way of a petition under § 1.181(a). See MPEP 1208.01.
The filing of the petition does not toll any time period running, therefore if appellant wishes to present arguments to address the rejection in the examiner’s answer, appellant must also file a reply brief to an examiner’s answer within two months from the mailing date of the examiner’s answer. If the TC Director or designee decides that the rejection is considered a new ground of rejection, the examiner would be required to send a corrected examiner’s answer that identifies the rejection as a new ground of rejection in a separate heading in the “Grounds of Rejection to be Reviewed on Appeal” and “Grounds of Rejection” sections of the examiner’s answer and include the approval of the TC Director or designee. The appellant may then file a request that the prosecution be reopened by filing a reply under § 1.111, or a request that the appeal be maintained by filing a reply brief or resubmitting the previously-filed reply brief, within two months from the mailing of the corrected examiner answer.
F6. If appellant files a request that prosecution be reopened, but fails to file a reply in compliance with § 1.111 to address the new ground of rejection in the examiner’s answer, should the entire appeal be dismissed?
No, the entire appeal should not be dismissed if there are other claims on appeal that are not subject to the new ground of rejection. Section 41.39(b) provides only for dismissal of the appeal as to the claims subject to the new ground of rejection. See F3 regarding non-responsive replies.
F7. If all of the claims under appeal are subject to the new ground of rejection provided in the examiner’s answer and appellant fails to file a reply in compliance under § 1.111 or a reply brief within the time period set forth in § 41.39(b), will the entire appeal be dismissed?
Yes, the entire appeal will be dismissed if all of the claims under appeal are subject to the new ground of rejection. The examiner should follow the procedure set forth in MPEP 1215, e.g., if there are no allowed claims, the application would be abandoned.
F8. If appellant fails to respond to an examiner’s answer that contains a new ground of rejection, who would dismiss the appeal as to the claims subject to the new ground of rejection?
If all of the claims under appeal are subject to the new ground of rejection, the examiner should dismiss the entire appeal by following the procedure set forth in the MPEP 1215 (e.g., if no claims stand allowed, the application is considered as abandoned on the date after the reply or reply brief is due).
If only some of the claims under appeal are subject to the new ground of rejection, the examiner should notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and the claims subject to the new ground of rejection are canceled. The dismissal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. Examiner may use the following draft form paragraph to notify the appellant:
Appellant failed to respond to the examiner’s answer that includes a new ground of rejection mailed on [1]. Under 37 CFR 41.39, if an examiner’s answer contains a rejection designated 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 under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to address each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply or a reply brief within the time period set forth in 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled. Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. In bracket 1, insert the mailing date of the examiner’s answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
F9. If examiner wants to cite a judicial decision that was published in the USPQ and West Reporter System in an examiner answer, where can the examiner find both citations?
The USPQ link on the patent examiner’s toolkit can be used to obtain a West Reporter System citation. Just put the case name in the search box, select “All Collections” in the box, and hit “Go.” In the “All Collections Results,” in the Parallel Citations (USPQ2d and USPQ) row, hit “Go” to obtain the West Reporter System citation.
F10. How does a Technology Center Director, or his or her designee, indicate approval of a new ground of rejection (or a supplemental examiner's answer)?
The Technology Center Director, or his or her designee would indicate approval of a new ground of rejection (or a supplemental examiner's answer) by stamping or writing "New Ground of Rejection Approved" on the first page of the examiner's answer (or a supplemental examiner's answer) along with the approving person's printed name, signature and the date, or by providing a similar clear indication on the examiner's answer (or a supplemental examiner's answer) that the action has been approved.
G1. If a reply brief is filed in response to an examiner’s answer that includes a new ground of rejection, can the examiner provide a supplemental examiner’s answer to respond to any new issue raised in the reply brief? Can the appellant request that prosecution be reopened after such a supplemental examiner’s answer?
The examiner may provide a supplemental examiner’s answer, with the Technology Center Director’s or his or her designee's approval, to respond to the new issue(s) raised in the reply brief. The appellant cannot request that prosecution be reopened after such a supplemental examiner’s answer. The appellant may file another reply brief under § 41.41 to any supplemental examiner’s answer within 2 months from the date of the supplemental examiner’s answer. 37 CFR 41.43(b). Extensions of time under § 1.136(a) are not applicable.
G2. Does the examiner have to enter a reply brief that is filed in compliance with § 41.41?
Yes, § 41.43 provides that the primary examiner must acknowledge receipt and entry of the reply brief (which is the same procedure as in the former § 1.193(b)(1)). A reply brief that is not filed in compliance with § 41.41(a) (e.g., the reply brief is not timely filed within two months from the date of the examiner’s answer or it includes a new or non-entered amendment), however, will not be considered. The examiner will notify the appellant that the reply brief is non-compliant.
G3. Can appellant, in a reply brief, present arguments that are not limited to the new ground of rejection or new issues raised in the examiner’s answer?
Yes, appellant may include other new issues in a reply brief. Appellant is not limited to responding only to the new rejection or new issue raised in the examiner’s answer. However, new or non-admitted amendments/affidavits must not be included. 37 CFR 41.41(a)(2).
G4. What are some examples of a new issue raised in a reply brief which would provide the examiner the option to file a supplemental examiner's answer?
Example 1: The rejection under 35 USC 103 over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous and therefore the two references cannot be combined.
Example 2: Same rejection as Example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the prior art.
H. Supplemental Examiner's Answer (§41.43)
H1. When may an appellant request that prosecution be reopened pursuant to § 41.50(a)(2) in response to a supplemental examiner’s answer?
Appellant may request to reopen prosecution only if (1) a supplemental examiner’s answer is written in response to a remand by the Board; (2) the remand is for further consideration of a rejection; and (3) the remand is on or after the effective date. If the Board does not remand the application to the examiner or the remand is for another reason (e.g., for consideration of a new issue raised in a reply brief), the appellant cannot request that prosecution be reopened under § 41.50(a)(2) in response to a supplemental examiner’s answer.
H2. If the examiner writes a supplemental examiner’s answer responding to a new issue raised in a reply brief, and then the appellant files a second reply brief that raises another new issue, can the examiner provide a second supplemental examiner’s answer to respond to the new issue raised in the second reply brief?
Yes, with the Technology Center Director’s, or his or her designee’s, approval.
H3. Do all remands from the Board in which the examiner introduces a supplemental examiner's answer provide appellant the opportunity to have the prosecution reopened under 37 CFR 41.50?
No. Only remands which are in further consideration of a rejection shall provide appellant the right to reopen prosecution under 37 CFR 41.50. An example of a remand in further consideration of a rejection is where the Board has knowledge of a ground of rejection not involved in the appeal and remands the application for consideration of such ground of rejection. Certain remands from the Board will not give the appellant the right to reopen prosecution (e.g., administrative remands, a remand to consider an IDS submitted after the jurisdiction has shifted to the Board and a remand to consider a reply brief not addressed by the examiner).
I1. Is the revised ex parte appeal practice provided in the current MPEP?
The current MPEP (Eighth Edition, Second Revision, May 2004) does not include the revised appeal practice. . The revised appeal practice will be incorporated into the next revision of the MPEP.