United States Patent and Trademark Office OG Notices: 21 Aug 2007
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 41
[Docket No.: PTO-P-2007-0006]
RIN 0651-AC12
Rules of Practice Before the
Board of Patent Appeals and
Interferences in Ex Parte Appeals
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Notice of proposed rule making.
SUMMARY: The Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office proposes changes
to the rules governing practice before the Board of Patent Appeals and
Interferences in ex parte patent appeals. The changes are needed to permit
the Board to handle an increasing number of ex parte appeals in a timely
manner.
The proposed rules seek to provide examiners and Office
reviewers with a clear and complete statement of an appellant's
position at the time of filing an appeal brief so as to enhance the
likelihood that appealed claims will be allowed without the necessity
of further proceeding with the appeal, minimize the pendency of appeals
before the Office, minimize the need for lengthy patent term
adjustments in cases where claims become allowable as a result of an
action by the Board in an appeal, provide uniform treatment of requests
for an extension of time filed after an appeal brief is filed, and make
the decision-making process more efficient.
DATES: Comments are solicited from interested individuals or entities.
Written comments must be received on or before September 28, 2007. No
public hearing will be held.
ADDRESSES: Submit comments:
1. By electronic mail to BPAI.Rules@uspto.gov.
2. By mail to Mail Stop Interference, Director of the United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
3. By facsimile to 571-273-0042.
To the extent reasonably possible, the Office will make the comments
available at http://www.uspto.gov/web/offices/dcom/bpai/. To
facilitate this goal, the Office strongly encourages the submission of
omments electronically, in either ASCII format or ADOBE(R) portable
document format (pdf). Regardless of which submission mode is used to
make a submission, the submitter should write only "Ex parte Appeal
Rules" in the subject line to ensure prompt consideration of any
comments.
Because the comments will be made available to the public, the comments
should not include information that the submitter does not wish to have
published. Comments that include confidentiality notices will not be
entered into the record.
FOR FURTHER INFORMATION CONTACT:
Fred E. McKelvey or Allen R. MacDonald at 571-272-9797.
SUPPLEMENTARY INFORMATION:
Explanation of Proposed Changes
Existing rules in Part 1 are denominated as "Rule x" in this
supplementary information. A reference to Rule 136(a) is a reference to
37 CFR 1.136(a) (2006).
Existing rules in Part 41 are denominated as "Bd.R. x" in this
supplementary information. A reference to Bd.R. 41.3 is a reference to
37 CFR 41.3 (2006).
Proposed rules are denominated as "Proposed Bd.R." in this
supplementary information.
The Board has jurisdiction to consider and decide ex parte appeals in
patent applications (including reissue, design and plant patent
applications) and ex parte reexamination proceedings.
The Board is currently experiencing a large increase in the number of
ex parte appeals. In FY 2006, the Board received 3,349 ex parte
appeals. In FY 2007, the Board expects to receive more than 4,000 ex
parte appeals. In FY 2008, the Board expects to receive over 5,000 ex
parte appeals. These rules are proposed to change procedures in such a
way as to allow the Board to continue to resolve ex parte appeals in a
timely manner.
The proposed rules do not propose to change any of the rules relating
to inter partes reexamination appeals. Nor do the proposed rules
propose to change any of the rules relating to contested cases.
In some instances, the rules propose to adopt practices similar to
those of the Court of Appeals for the Federal Circuit. For example, an
appendix would be required, page limits would be set, and a table of
contents and a table of authorities would be required in briefs.
Discussion of Specific Rules
Definitions
Proposed Bd.R. 41.2 would revise Bd.R. 41.2 to eliminate from the
definition of "Board" any reference to a proceeding under Bd.R.
41.3 relating to petitions to the Chief Administrative Patent Judge.
The Director has delegated authority to the Chief Administrative Patent
Judge to decide petitions under Bd.R. 41.3. See Manual of Patent
Examining Procedure, Sec. 1002.02(f) (8th ed., Aug., 2006).
Proposed Bd. R. 41.2 would also revise Bd.R. 41.2 to eliminate a
petition under Proposed Bd.R. 41.3 from the definition of contested
case. At the present time, there are no petitions authorized in a
contested case.
Petitions
Bd.R. 41.3 would be revised to include a delegation of authority from
the Director to the Chief Administrative Patent Judge to decide certain
petitions authorized by Part 41 as proposed to be revised. The
delegation of authority would be in addition to that already set out in
Manual of Patent Examining Procedure, Sec. 1002.02(f) (8th ed., Aug.,
2006). The petitions would include (1) seeking an extension of time to
file certain papers after an appeal brief is filed in an ex parte
appeal and (2) to enlarge the page limit of an appeal brief, reply
brief, supplemental reply brief or request for rehearing.
Proposed Bd.R. 41.3(a) would require that a copy of any petition be
forwarded to the Chief Administrative Patent Judge, so as to minimize
any chance that a petition may be overlooked.
Proposed Bd.R. 41.3(b) would define the scope of petitions which can be
filed pursuant to the rules. Under Proposed Bd.R. 41.3(b), a petition
could not be filed to seek review of issues committed by statute to a
panel. See, e.g., In re Dickinson, 299 F.2d 954, 958, 133
USPQ 39, 43 (CCPA 1962).
Timeliness of petitions
Proposed Bd.R. 41.4(c) would be revised to add the phrase "Except to
the extent provided in this part" and to revise paragraph 2 to read:
"Filing of a notice of appeal and an appeal brief (see Secs. 41.31(c)
and 41.37(c))." The revision would restrict Proposed Bd.R. 41.4(c)(2)
to the notice of appeal and appeal brief. The Chief Administrative
Patent Judge would determine whether extensions are to be granted for
the filing of most other papers during the pendency of the appeal.
Definitions
Proposed Bd.R. 41.30 would be revised to add a definition of "record
on appeal." The record on appeal would consist of (1) the
specification, (2) drawings (if any), (3) U.S. patents cited by the
examiner or appellant, (4) published U.S. applications cited by the
examiner or appellant, (5) the appeal brief, including all appendices,
(6) the examiner's answer, (7) any reply brief, including any
supplemental appendix, (8) any supplemental examiner's answer, (9) any
supplemental reply brief, (10) any request for rehearing, (11) any
order or decision entered by the Board or the Chief Administrative
Patent Judge, and (12) any other document or evidence which was
considered by the Board as indicated in any opinion accompanying any
order or decision. The definition would advise applicants of what
documents the Board would consider in resolving the appeal. The
definition would also make it clear to any reviewing court what record
was considered by the Board.
Appeal to Board
Proposed Bd.R. 41.31(a) would provide that an appeal is taken from a
decision of the examiner to the Board by filing a notice of appeal. The
following language would be acceptable under the rule as proposed:
"An appeal is taken from the decision of the examiner entered
[specify date appealed rejection was entered]." An appeal can be
taken when authorized by the statute. 35 U.S.C. 134. The provision of
Bd.R. 41.31(b) that a notice of appeal need not be signed has been
removed. Accordingly, if promulgated, Proposed Bd.R. 41.31 would no
longer provide that a notice of appeal need not be signed. Instead,
papers filed in connection with an appeal, including the notice of
appeal, would need to be signed.
Proposed Bd.R. 41.31(b) would require that the notice of appeal be
accompanied by the fee required by law and would refer to the rule that
specifies the required fee.
Proposed Bd.R. 41.31(c) would specify the time within which a notice of
appeal would have to be filed in order to be considered timely. The
time for filing a notice of appeal appears in Rule 134.
Proposed Bd.R. 41.31(d) would provide that a request for an extension
of time to file a notice of appeal in an application is governed by
Rule 136(a). Proposed Bd.R. 41.31(d) would also provide that a request
for an extension of time to file a notice of appeal in an ex parte
reexamination proceeding is governed by Rule 550(c).
Proposed Bd.R. 41.31(e) would define a "non-appealable issue" as an
issue that is not subject to an appeal under 35 U.S.C. 134.
Non-appealable issues are issues (1) over which the Board does not
exercise authority in appeal proceedings and (2) which are handled by a
petition. Non-appealable issues include such matters as an examiner's
refusal to (1) enter a response to a final rejection, (2) enter
evidence presented after a final rejection, (3) enter an appeal brief
or a reply brief, or (4) withdraw a restriction requirement. The
proposed rules contemplate that some petitions relating to
non-appealable issues are to be decided by the Chief Administrative
Patent Judge. Some of those non-appealable issues include: (1) a
petition to exceed page limit and (2) a petition to extend time for
filing a paper in the appeal after the filing of the appeal brief. An
applicant or patent owner dissatisfied with a decision of an examiner
on a non-appealable issue would be required to seek review by petition
before an appeal is considered on the merits. Failure to timely file a
petition seeking review of a decision of the examiner related to a
non-appealable issue would generally constitute a waiver to have those
issues considered. The language "[f]ailure to timely file" would
be interpreted to mean not filed within the time set out in the rules.
The object of the rule, as proposed, would be to maximize resolution of
non-appealable issues before an appeal is considered on the merits.
Under current practice, an applicant or a patent owner often does not
timely seek to have non-appealable issues resolved thereby
necessitating a remand by the Board to the examiner to have a
non-appealable issue resolved. The remand adds to the pendency of an
application or reexamination proceeding and, in some instances, may
unnecessarily enlarge patent term adjustment. The Office would intend
to strictly enforce the waiver provisions of Proposed Bd.R. 41.31(e),
if promulgated, with the view of making the appeal process
administratively efficient. While the Office will retain discretion to
excuse a failure to timely settle non-appealable issues, it is expected
that exercise of that discretion will be reserved for truly unusual
circumstances.
Amendments and evidence filed after appeal and before brief
Proposed Bd.R. 41.33(a) would provide that an amendment filed after the
date a notice of appeal is filed and before an appeal brief is filed
may be admitted as provided in Rule 116.
Proposed Bd.R. 41.33(b) would give the examiner discretion to permit
entry of an amendment filed with or after an appeal brief is filed
under two circumstances. A first circumstance would be to cancel
claims, provided cancellation of claims does not affect the scope of
any other pending claim in the proceedings. A second circumstance would
be to rewrite dependent claims into independent form.
Proposed Bd.R. 41.33(c) would provide that all other amendments filed
after the date of an appeal brief is filed will not be admitted, except
as permitted by (1) Proposed Bd.R. 41.39(b)(1) (request to reopen
prosecution after new rejection in an examiner's answer), (2) Proposed
Bd.R. 41.50(b)(1) (request to reopen prosecution after entry of a
supplemental examiner's answer following a remand by the Board), (3)
Proposed Bd.R. 41.50(d)(1) (request to reopen prosecution after entry
of new rejection by the Board), and (4) Proposed Bd.R. 41.50(e)
(amendment after recommendation by the Board).
Proposed Bd.R. 41.33(d) would provide that evidence filed after a
notice of appeal is filed and before an appeal brief is filed may be
admitted (1) if the examiner determines that the evidence overcomes
some or all rejections under appeal and (2) appellant shows good cause
why the evidence was not earlier presented. The first step in an
analysis of whether evidence may be admitted is a showing of good cause
why the evidence was not earlier presented. The Office has found that
too often an applicant or a patent owner belatedly presents evidence as
an afterthought and that the evidence was, or should have been, readily
available. Late presentation of evidence is not consistent with
efficient administration of the appeal process. Under the rule, as
proposed, the Office would strictly apply the good cause standard.
Cf. Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir.
1989). For example, a change of attorneys at the appeal stage or an
unawareness of the requirement of a rule would not constitute a showing
of good cause. If good cause is not shown, the analysis ends and the
evidence would not be admitted. In those cases where good cause is
shown, a second analysis will be made to determine if the evidence
would overcome all rejections. Even where good cause is shown, if the
evidence does not overcome all rejections, the evidence would not be
admitted. Alternatively, the examiner could determine that the evidence
does not overcome all the rejections and on that basis alone could
refuse to admit the evidence.
Proposed Bd.R. 41.33(e) would provide that evidence filed after an
appeal brief is filed will not be admitted except as permitted by (1)
Proposed Bd.R. 41.39(b)(1) (request to reopen prosecution after new
rejection in examiner's answer), (2) Proposed Bd.R. 41.50(b)(1)
(request to reopen prosecution after entry of a supplemental examiner's
answer following a remand by the Board), and (3) Proposed Bd.R.
41.50(d)(1) (request to reopen prosecution after new rejection entered
by the Board).
Jurisdiction over appeal
Proposed Bd.R. 41.35(a) would provide that the Board acquires
jurisdiction upon entry of a docket notice by the Board. At an
appropriate time after proceedings are completed before the examiner, a
docket notice would be entered in the application or reexamination
proceeding file and sent to the appellant. By delaying the transfer of
jurisdiction until the appeal is fully briefed and the position of the
appellant is fully presented for consideration by the examiner and the
Office reviewers (appeal conferees), the possibility exists that the
examiner will find some or all of the appealed claims patentable
without the necessity of proceeding with the appeal and invoking the
jurisdiction of the Board. For this reason, jurisdiction should
transfer to the Board only after (1) the appellant has filed an appeal
brief, (2) the examiner has entered an answer, and (3) the appellant
has filed a reply brief or the time for filing a reply brief has
expired. The current rule (Bd.R. 41.35(a)) provides that the Board
acquires jurisdiction upon transmittal of the file, including all
briefs and examiner's answers, to the Board. However, under the current
practice, an appellant may or may not know the date when a file is
transmitted to the Board. Most files are now electronic files (Image
File Wrapper or IFW file) as opposed to paper files. Accordingly, a
paper file is no longer transmitted to the Board. Under current
practice, the Board prepares a docket notice which is (1) entered in
the IFW file and (2) sent to appellant. Upon receipt of the docket
notice, appellant knows that the Board has acquired jurisdiction over
the appeal. Proposed Bd.R. 41.35(a) essentially would codify current
practice and establish a precise date, known to all involved, as to
when jurisdiction is transferred to the Board.
Proposed Bd.R. 41.35(b) would provide that the jurisdiction of the
Board ends when the Board (1) orders a remand, or (2) enters a final
decision and judicial review is timely sought, or (3) enters a final
decision and the time for seeking judicial review has expired. There
are two occasions when a remand is entered. First, a remand is entered
when the Board is of the opinion that clarification on a point of fact
or law is needed. See Proposed Bd.R. 41.50(b). Second, a
remand is entered when an appellant elects further prosecution before
the examiner following entry of a new rejection by the Board.
See Proposed Bd.R. 41.50(d)(1). Upon entry of a remand the
Board's jurisdiction ends. The Board also loses jurisdiction as a
matter of law when an appeal to the Federal Circuit is filed in the
USPTO. See In re Allen, 115 F.2d 936, 47 USPQ 471 (CCPA
1940) and In re Graves, 69 F.3d 1147, 1149, 36 USPQ2d 1697,
1698 (Fed. Cir. 1995). A final decision is a panel decision which
disposes of all issues with regard to a party eligible to seek judicial
review and does not indicate that further action is needed.
See Bd.R. 41.2 (definition of "final"). When a party
requests rehearing, a decision becomes final when the Board decides the
request for rehearing. A decision including a new rejection is an
interlocutory, not a final, order. If an appellant elects to ask for
rehearing to contest a new rejection, the decision on rehearing is a
final decision for the purpose of judicial review.
Bd.R. 41.35(c) would continue current practice and provide that the
Director could sua sponte order an appeal to be remanded to
an examiner before entry of a Board decision. The Director has inherent
authority to order a sua sponte remand to the examiner.
Ordinarily, a rule is not necessary for the Director to exercise
inherent authority. However, in this particular instance, it is
believed that a statement in the rule of the Director's inherent
authority serves an appropriate public notice function.
Appeal brief
Proposed Bd.R. 41.37 would provide for filing an appeal brief to
perfect an appeal and would set out the requirements for appeal briefs.
The appeal brief is a highly significant document in an ex parte
appeal. Appeal brief experience under current Bd.R. 41.37 has been
mixed. Proposed Bd.R. 41.37 seeks (1) to take advantage of provisions
of Bd.R. 41.37 which have proved useful, (2) clarify provisions which
have been subject to varying interpretations by counsel, and (3) add
provisions which are expected to make the decision-making process more
focused and efficient.
Proposed Bd.R. 41.37(a) would provide that an appeal brief shall be
filed to perfect an appeal. Upon a failure to timely file an appeal
brief, proceedings on the appeal process would be considered
terminated. The language "without further action on the part of the
Office" would provide notice that no action, including entry of a
paper by the Office, would be necessary for the appeal to be considered
terminated. Proposed Bd.R. 41.37(a) would not preclude the Office from
entering a paper notifying an applicant or patent owner that the appeal
has been terminated. Any failure of the Office to enter a paper
notifying an applicant or patent owner that an appeal stands terminated
would not affect the terminated status of the appeal. The language
"proceedings are considered terminated" would provide notice that
when no appeal brief is filed, the time for filing a continuing
application under 35 U.S.C. 120 would be before the time expires for
filing an appeal brief.
Proposed Bd.R. 41.37(b) would provide the appeal brief shall be
accompanied by the fee required by Bd.R. 41.20(b)(2).
Proposed Bd.R. 41.37(c) would provide that an appellant must file an
appeal brief within two months from the filing of the notice of appeal.
Proposed Bd.R. 41.37(d) would provide the time for filing an appeal
brief is extendable under the provisions of Rule 136(a) for
applications and Rule 550(c) for ex parte reexamination proceedings.
Consideration was given to proposing a requirement for a petition to
extend the time for filing an appeal brief. However, in view of the
pre-appeal conference pilot program (see Official Gazette of July 12, 2005;
http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm),
and in an effort to encourage continued participation in that pilot
program, further consideration on whether to require a petition will be
deferred pending further experience by the Office in the pre-appeal
conference pilot program.
Proposed Bd.R. 41.37(e) would provide that an appeal brief must
contain, under appropriate headings and in the order indicated, the
following items: (1) statement of the real party in interest, (2)
statement of related cases, (3) jurisdictional statement, (4) table of
contents, (5) table of authorities, (6) status of claims, (7) status of
amendments, (8) rejections to be reviewed, (9) statement of facts, (10)
argument, and (11) an appendix containing (a) claims section, (b) claim
support section, (c) drawing analysis section, (d) means or step plus
function analysis section, (e) evidence section, and (f) related cases
section. The items are otherwise defined in other subsections of
Proposed Bd.R. 41.37 and, where applicable, would apply to appeal
briefs, reply briefs (Proposed Bd.R. 41.41), and supplemental reply
briefs (Proposed Bd.R. 41.44).
Proposed Bd.R. 41.37(f) would require a "statement of real party in
interest" which would include an identification of the name of the
real party in interest. The principal purpose of an identification of
the name of the real party in interest is to permit members of the
Board to assess whether recusal is required or would otherwise be
appropriate. Another purpose is to assist employees of the Board to
comply with the Ethics in Government Act. Since a real party in
interest can change during the pendency of an appeal, there would be a
continuing obligation to update the real party in interest during the
pendency of the appeal.
Proposed Bd.R. 41.37(g) would require an appeal brief to include a
"statement of related cases." The statement of related cases would
identify related cases by (1) application number, patent number, appeal
number or interference number or (2) court docket number. The statement
would encompass all prior or pending appeals, interferences or judicial
proceedings known to appellant (or appellant's legal representative or
any assignee) that relate to, directly affect, or would be directly
affected by or have a bearing on the Board's decision in the appeal. A
copy of any final or significant interlocutory decision rendered by the
Board or a court in any proceeding identified under this paragraph
shall be included in the related cases section of the appendix. A
significant interlocutory decision would include (1) a decision on a
patentability motion in an interference, or (2) a decision interpreting
a claim in an interference or by a court. Appellant would be under a
continuing obligation to update this item during the pendency of the
appeal.
Proposed Bd.R. 41.37(h) would require an appeal brief to contain a
"jurisdictional statement" which would set out why appellant
believes that the Board has jurisdiction to consider the appeal. The
jurisdictional statement would include a statement of (1) the statute
under which the appeal is taken, (2) the date of the decision from
which the appeal is taken, (3) the date the notice of appeal was filed,
and (4) the date the appeal brief is being filed. If a notice of appeal
or an appeal brief is filed after the time specified in the rules,
appellant would have to indicate (1) the date an extension of time was
requested and (2) the date the request was granted. A jurisdictional
statement would minimize the chance that the Board would consider an
appeal when the application on appeal is abandoned or a reexamination
proceeding on appeal has terminated. An example of a jurisdictional
statement in an application under a heading styled "Jurisdictional
statement" would be: "The Board has jurisdiction under 35 U.S.C.
134(a). The Examiner entered a final rejection on August 1, 2006,
setting a three-month period for response. The time for responding to
the final rejection expired on November 1, 2006. Rule 134. A notice of
appeal and a request for a one-month extension of time under Rule
136(a) was filed on November 15, 2006. The time for filing an appeal
brief is two months after the filing of a notice of appeal. Bd.R.
41.37(c). The time for filing an appeal brief expired on January 16,
2007 (Monday, January 15, 2007, being a Federal holiday). The appeal
brief is being filed on January 16, 2007." If during the preparation
of a jurisdictional statement, an appellant becomes aware that its
application is abandoned, appellant could then take steps to revive the
application, if revival is appropriate. See Rule 137.
Proposed Bd.R. 41.37(i) would require an appeal brief to contain a
"table of contents" identifying the items listed in Proposed Bd.R.
41.37(e) along with a page reference where each item begins. In the
case of a reply brief, the table of contents would identify the items
required by the reply brief rule (Proposed Bd.R. 41.41(d)). In the case
of a supplemental reply brief, the table of contents would identify the
items required by the supplemental reply brief rule (Proposed Bd.R.
41.44(d)).
Proposed Bd.R. 41.37(j) would require an appeal brief to contain a
"table of authorities." This item would list (1) court and
administrative decisions (alphabetically arranged), (2) statutes, and
(3) other authorities, along with a reference to the pages of the
appeal brief where each authority is cited. A similar requirement
applies to a reply brief and a supplemental reply brief.
Proposed Bd.R. 41.37(k) would require an appeal brief to include a
"status of pending claims" (e.g., rejected-appealed, rejected-not
appealed, cancelled, allowable, withdrawn from consideration, or
objected to). An example of a status of pending claims might read as
follows under a heading styled "Status of pending claims:"
"Claims 1-7 are pending in the application on appeal: Claim 1
(rejected-not appealed), Claims 2-3 (rejected-appealed), Claim 4
(restricted and withdrawn from consideration), Claim 5 (objected to as
depending from rejected claim), and Claims 6-7 (allowable)."
Proposed Bd.R. 41.37(l) would require an appeal brief to indicate the
"status of amendments" for all amendments filed after final
rejection (e.g., entered or not entered). Examples of a status of
amendments might read as follows under a heading styled "Status of
amendments": (1) "No amendment was filed after final rejection."
(2) "An amendment filed October 31, 2006, was not entered
by the examiner." (3) "An amendment filed November 1, 2006, was
entered by the examiner." (4) "An amendment filed October 31, 2006,
was not entered by the examiner, but an amendment filed
November 1, 2006, was entered by the examiner."
Proposed Bd.R. 41.37(m) would require an appeal brief to set out the
"rejections to be reviewed," including the claims subject to each
rejection. Examples might read as follows under a heading styled
"Rejections to be reviewed": (1) "Rejection of claim 2 as being
anticipated under 35 U.S.C. 102(b) over Johnson." (2) "Rejection of
claims 2-3 as being unpatentable under 35 U.S.C. 103(a) over Johnson
and Young." (3) "Rejection of claim 2 as failing to comply with the
written description requirement of the first paragraph of 35 U.S.C.
112." (4) "Rejection of claim 2 as failing to comply with the
enablement requirement of the first paragraph of 35 U.S.C. 112." (5)
"Rejection of claim 3 under 35 U.S.C. 251 based on recapture."
Proposed Bd.R. 41.37(n) would require a "statement of facts."
Appellant would set out in an objective and non-argumentative manner
the material facts relevant to the rejections on appeal, preferably in
numbered paragraphs. A clear, concise and complete statement of
relevant facts will clarify the position of an appellant on dispositive
issues and assist the examiner in reconsidering the patentability of
the rejected claims. A fact would be required to be supported by a
reference to the page number of the record on appeal. Where
appropriate, the citation should also be to a specific line and to a
drawing figure and element number of the record on appeal (see Proposed
Bd.R. 41.37(t)). Statements of facts should be set out in short
declarative sentences, and each sentence should address a single fact.
For example, "In rejecting claims 1-5, the examiner cites Jones (App.
[App. meaning appendix], page 8, lines x-y)." "Jones describes a
widget (App., page 19, col. 8, lines 3-4 and App., page 16, Figure 1,
elements 12 and 13)." A compound statement of fact is not proper,
e.g., "Jones describes a widget (App., page 19, col. 8, lines 3-4)
and Smith does not describe a device." A statement of facts would
have to be non-argumentative, meaning that an appellant would not be
able to argue its appeal in the statement of facts. Rather, the
statement of facts is designed to require an appellant to set out the
facts which the appellant considers material for resolution of the
appeal, thereby assisting the examiner initially and, if necessary, the
Board thereafter to focus on the dispositive portions of the record.
For example, in the case of a rejection for obviousness under Sec. 103,
the facts should address at least the scope and content of the prior
art, any differences between the claim on appeal and the prior art, and
the level of skill in the art. In the past, some appellants have
provided minimal factual development in an appeal brief, apparently
believing that the Board will scour the record to divine the facts. It
should be remembered that when the appeal reaches the Board, the panel
members do not know anything about the appellant's invention or the
prosecution history of the application on appeal. Likewise, too often
an appellant will not support a statement of fact in an appeal brief by
an explicit reference to the evidence. A statement of fact based on the
specification would be proper if supported by a reference to page and
line (and where appropriate also to drawing figure and element number).
A statement of fact based on a patent would be proper if it is
supported by a reference to a column and line (and where appropriate
also to a drawing figure and element number). A statement of fact based
on an affidavit would be proper if supported by a reference to a page
and line number or to a page and paragraph number of the affidavit; the
affidavit would appear in the evidence section of the appendix. The
Office is proposing requiring a reference to a specific citation
because an appellant should not expect the examiner or the Board to
search the record to determine whether a statement of fact is supported
by the evidence. Proposed Bd.R. 41.37(n), as well as other proposed
rules, is consistent with the approaches taken by federal courts
concerning appeal brief practice and other briefing practice: (1)
Clintec Nutrition Co. v. Baxa Corp., 988 F. Supp. 1109,
1114, n.16, 44 USPQ2d 1719, 1723, n.16 (N.D. Ill. 1997) (where a party
points the court to a multi-page exhibit without citing a specific
portion or page, the court will not pour over the documents to extract
the relevant information); (2) Ernst Haas Studio, Inc. v. Palm
Press, Inc., 164 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir.
1999) ("Appellant's Brief is at best an invitation to the court to
scour the record, research any legal theory that comes to mind, and
serve generally as an advocate for appellant. We decline the
invitation."); (3) Winner International Royalty Corp. v.
Wang, 202 F.3d 1340, 1351, 53 USPQ2d 1580, 1589 (Fed. Cir. 2000)
("[W]e will not search the record on the chance of discovering . . .
whether the district court abused its discretion."); (4)
Gorence v. Eagle Food Centers, Inc., 242 F.3d 759, 762-63
(7th Cir. 2001) ("Little has been done ... to make slogging through
the record here either more efficient or more pleasant. And it is
simply not true, we want to emphasize, that if a litigant presents an
overload of irrelevant or non-probative facts, somehow the
irrelevancies will add up to relevant evidence ...."); and (5)
DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999)
("[An appeal] brief must make all arguments accessible to the
judges, rather than ask them to play archaeologist with the record."
See also (1) Shiokawa v. Maienfisch, 56 USPQ2d
1970, 1975 (Bd. Pat. App. & Int. 2000) and (2) LeVeen v.
Edwards, 57 USPQ2d 1406, 1413 (Bd. Pat. App. & Int. 2000).
Proposed Bd.R. 41.37(o) would require an appeal brief to contain an
argument comprising an analysis explaining, as to each rejection to be
reviewed, why the appellant believes the examiner erred as to each
rejection to be reviewed. The analysis would have to address all points
made by the examiner with which the appellant disagrees. The
presentation of a concise, but comprehensive, argument in response to
the final rejection will efficiently frame any dispute between the
appellant and the examiner not only for the benefit of the Board but
also for consideration by the examiner and Office reviewers (appeal
conferees) and provide the best opportunity for resolution of the
dispute without the necessity of proceeding with the appeal. Where an
argument has previously been presented to the examiner, the analysis
would have to identify where any argument being made to the Board was
made in the first instance to the examiner. Where an argument has not
previously been made to the examiner, an appellant would be required to
say so in the appeal brief so that the examiner would know that the
argument is new. An example where an argument might not previously have
been made to an examiner might occur under the following fact scenario.
A first office action rejects claims over Reference A. Applicant amends
the claims to avoid Reference A. The examiner enters a final rejection
now relying on References A and B. Applicant elects to appeal without
filing a response under Rule 116. While applicants are encouraged to
file a response under Rule 116 to possibly avoid an appeal all
together, at the present time there is no requirement for an applicant
to file a Rule 116 response. Whether such a requirement should be made
in the future will be held in abeyance pending experience under the
rules as proposed, should they ultimately be promulgated. The Board has
found that many arguments made in an appeal brief were never earlier
presented to the examiner even though they could have been presented
(without filing a Rule 116 response). To promote clarity, Proposed
Bd.R. 41.37(o) would also require that each rejection for which review
is sought shall be separately argued under a separate heading. Also,
Proposed Bd.R. 41.37(o) would provide that any finding made or
conclusion reached by the examiner that is not challenged would be
presumed to be correct. Proposed Bd. R. 41.37(o) would also refer to
paragraphs (4) through (8) of the rule where additional requirements
for making arguments in response to statutory rejections would be
found.
Proposed Bd.R. 41.37(o)(1) would provide that when a rejection applies
to two or more claims, the appellant could elect to (1) have all claims
stand or fall together or (2) argue the separate patentability of
individual claims. The choice would be up to the appellant. However, if
the appeal brief fails to make an explicit or clear election, the Board
would (1) treat all claims subject to the rejection as standing or
falling together and (2) select a single claim to decide the appeal as
to that rejection. Any doubt as to whether an election has been made
would be resolved against the appellant. For each claim argued
separately, a subheading identifying the claim by number would be
required. The requirement for a separate subheading in the appeal brief
is to minimize any chance the examiner or the Board would overlook an
argument directed to the separate patentability of a particular claim.
In the past, appellants have been confused about whether a statement of
what a claim covers is sufficient to constitute an argument that the
claim is separately patentable. It is not. A statement that a claim
contains a limitation not present in another claim would not in and of
itself be sufficient to satisfy the requirement of Proposed Bd.R.
41.37(o)(1) that a separate argument be made. Unless an appellant plans
to argue the separate patentability of a claim, the appellant would not
discuss or refer to the claim in the argument section of the appeal
brief. A copy of the claims will be before the Board in the "claims
section" (Proposed Bd.R. 41.37(p)). In an application containing
claims 1-3 where the examiner has made (1) a Section 102 rejection or
(2) a Section 103 rejection or (3) both a Section 102 and 103
rejection, examples of a proper statement of "claims standing or
falling together" would be as follows: (1) "With respect to the
rejection under Section 102, claims 1-3 stand or fall together." (2)
"With respect to the rejection under Section 103, claims 1-2 stand or
fall together; claim 3 is believed to be separately patentable." (3)
"With respect to the rejection under Section 102, claims 1-2 stand or
fall together; claim 3 is believed to be separately patentable. With
respect to the rejection under Section 103, the claims stand or fall
together."
Proposed Bd.R. 41.37(o)(2) would provide that the Board would only
consider arguments that (1) are presented in the argument section of
the appeal brief and (2) address claims set out in the claim support
section of the appendix. Appellant would waive all arguments which
could have been, but were not, addressed in the argument section of the
appeal brief. A first example would be where Argument 1 and Argument 2
are presented in response to a final rejection, but only Argument 1 is
presented in the appeal brief. Only Argument 1 would be considered.
Argument 2 would be waived. A second example would be where an
applicant presents an affidavit under Rule 131 or Rule 132 to the
examiner, but does not argue the relevance of the affidavit in the
appeal brief. The Board would not consider the affidavit in deciding
the appeal.
Proposed Bd.R. 41.37(o)(3) would require that when responding to points
made in the final rejection, the appeal brief shall specifically (1)
identify each point made by the examiner and (2) indicate where
appellant previously responded to each point that appellant has not
previously responded to the point. In supporting any argument, the
appellant shall refer to a page and, where appropriate a line, in the
evidence section of the appendix, specification, drawings (if any),
U.S. patents, and published U.S. applications. Examples of argument
formats that would be acceptable under Proposed Bd.R. 41.37(o)(3)
follow.
Example 1. In the case where an argument had been previously
presented to the examiner, the following format would be acceptable
under Proposed Bd.R. 41.37(o)(3). "The examiner states that Reference
A teaches element B. Final Rejection, App., page x, lines y-z. In
response, appellant previously pointed out to the examiner why the
examiner is believed to have erred. App., pages 8-9. The response is
[concisely state the response]." A similar format has been
successfully used for some years in oppositions and replies filed in
interference cases.
Example 2. Alternatively, in the case where an argument has
not been previously made to the examiner, the following format would be
acceptable under Proposed Bd.R. 41.37(o)(3). "In response to the
examiner's reliance on Reference C for the first time in the final
rejection (App., page 4), appellant's response includes a new argument
which has not been previously presented to the examiner. The response
is [concisely state the response]." Use of this format will
minimize any chance that the examiner will overlook an argument when
preparing the examiner's answer.
The recommended argument formats are intended to be efficient protocols
for assisting the Board in focusing on any differences between the
examiner's and appellant's positions.
Paragraphs (4) through (8) of Proposed Bd.R. 41.37(o) would reinstitute
specific requirements not found in Bd.R. 41.37, but that appeared in
the prior rule (37 C.F.R. 1.192(c)(8)(i) through (v)) (2004). Since
promulgation of Bd.R. 41.37, suggestions from outside the Office have
been made to have the Office reinsert the requirements of former Rule
192(c)(8)(i) through (v) into the rules. These paragraphs would require
that appellants expressly address the statutory requirements for
patentability. Paragraphs (4) through (7), as under the Office's prior
rules, would address rejections under 35 U.S.C. 102, 103 and 112 (first
and second paragraphs). There are, of course, other rejections which
are based on other sections of the Patent Law, e.g., 35 U.S.C. 101
(non-statutory subject matter, same invention double patenting, and
lack of utility), 35 U.S.C. 251 (recapture and presenting claims in
reissue applications that are broader than original patent claims), and
35 U.S.C. 305 (presenting claims in reexamination proceedings that are
broader than original patent claims). Likewise, there are non-statutory
rejections, such as obviousness double patenting and interference
estoppel. Since the vast majority of the rejections are based on Secs.
102, 103 and 112, it is proposed to have requirements in the rules
related only to those rejections. Setting out requirements for other
rejections is presently viewed as counterproductive and complicated
since it would be impossible to address all the various possibilities
for those other rejections. Accordingly, a "catch-all" for other
rejections is set out in Proposed Bd.R. 41.37(o)(8).
Proposed Bd.R. 41.37(o)(4) would require, for each rejection under 35
U.S.C. 112, first paragraph, that the argument shall also specify the
errors in the rejection and how the rejected claims comply with the
first paragraph of 35 U.S.C. 112, including, as appropriate, how the
specification and drawings, if any, (1) describe the subject matter
defined by the rejected claims, (2) enable any person skilled in the
art to which the invention pertains to make and use the subject matter
of the rejected claims, or (3) set forth the best mode contemplated by
the inventor of carrying out the claimed invention.
Proposed Bd.R. 41.37(o)(5) would require, for each rejection under 35
U.S.C. 112, second paragraph, that the argument shall also specify how
the rejected claims particularly point out and distinctly claim the
subject matter which appellant regards as the invention.
Proposed Bd.R. 41.37(o)(6) would require, for each rejection under 35
U.S.C. 102 (anticipation), that the argument shall also identify any
specific limitations in the rejected claims which are not described
(explicitly or inherently) in the prior art relied upon in support of
the rejection and, therefore, why the rejected claims are patentable
under 35 U.S.C. 102.
Proposed Bd.R. 41.37(o)(7) would require, for each rejection under 35
U.S.C. 103, that the argument shall (1) specify the errors in the
rejection, (2) if appropriate, specify the specific limitations in the
rejected claims that are not described in the prior art relied upon in
support of the rejection, and (3) explain how those limitations render
the claimed subject matter unobvious over the prior art. A general
argument that all limitations are not described in a single prior art
reference would not satisfy the requirements of this paragraph.
Proposed Bd.R. 41.37(o)(8) would require for any rejection other than
those mentioned in Proposed Bd.R. 41.37(o)(4) through (7) that the
argument shall specify the errors in the rejection, including where
appropriate the specific limitations in the rejected claims upon which
the appellant relies to establish error.
Proposed Bd.R. 41.37(p) would require an appeal brief to contain a
"claims section" in the appendix which would consist of an accurate
clean copy in numerical order of all claims pending in the application
or reexamination proceeding on appeal. The claims section of the
appendix would include all pending claims, not just those under
rejection. The status of each claim would have to be indicated.
Proposed Bd.R. 41.37(q) would require an appeal brief to contain a
"claim support section" of the appendix. The claim support section
would replace Bd.R. 41.37(c)(1)(v) which requires a concise explanation
of the subject matter defined in each of the independent claims on
appeal. The claim support section, for each claim argued separately
(see Proposed Bd.R. 41.37(o)(1)), would consist of an annotated copy of
the claim indicating in bold face between braces ({}) after each
limitation where, by page and line numbers, the limitation is described
in the specification as filed. Braces ({}) are used instead of
brackets [ ] because brackets are used in reissue claim practice.
Unlike the "claims section" (see Proposed Bd.R. 41.37(p)), only
those claims being argued separately would need to appear in the
"claim support section." A significant objective of the "claim
support section" would be to provide the examiner and the Board with
appellant's perspective on where language of the claims (including
specific words used in the claims, but not in the specification) finds
support in the specification. Finding support for language in the
claims can help the examiner and the Board construe claimed terminology
and limitations when applying the prior art. The claim support section
of the appendix would help the Board to interpret the scope of claims,
or the meaning of words in a claim, before applying the prior art.
Practice under current Bd.R. 41.37(c)(1)(v) has not been efficient
because of the diverse manners in which different appellants have
attempted to comply with the current practice. One significant problem
faced by the Board under the current practice occurs when the language
of a claim does not have direct antecedent language in the
specification. In order for the Board to understand the scope of a
claim or the meaning of a term in the claim, the Board primarily relies
on the specification. Moreover, in practice before the Office, a claim
is given its broadest reasonable construction consistent with the
specification. However, when the language of the claim does not find
correspondence in the specification, as filed, often it is difficult to
determine the meaning of a particular word in a claim or to give the
claim its broadest reasonable interpretation. The claim support section
of the appendix would give the examiner and the Board the appellant's
view on where the claim is supported by the application, as filed. The
proposed requirement, if promulgated, would significantly improve the
efficiency of the Board's handling of appeals.
Proposed Bd.R. 41.37(r) would require an appeal brief to contain a
"drawing analysis section" in the appendix. For each claim argued
separately (see Proposed Bd.R. (o)(1)), the drawing analysis section
would consist of an annotated copy of the claim in numerical sequence,
indicating in bold face between braces ({}) after each limitation
where, by reference or sequence residue number, each limitation is
shown in the drawing or sequence. A drawing analysis has been required
in interference cases since 1998 and has proven useful to the Board in
understanding claimed inventions described in applications and patents
involved in an interference. The drawing analysis section is expected
to be equally useful in ex parte appeals. If there is no drawing or
amino acid or nucleotide material sequence, the drawing analysis
section would state that there is no drawing or sequence. The purpose
of requiring a statement is to be certain that a drawing analysis has
not been overlooked.
Proposed Bd.R. 41.37(s) would require an appeal brief to contain a
"means or step plus function analysis section" in the appendix. The
means or step plus function analysis section would replace the
requirement of current Bd.R. 41.37(c)(1)(v) relating to identification
of structure, material or acts for means or step plus function claims
limitations contained in appealed claims. Under Proposed Bd.R.
41.37(s), the means or step plus function analysis section would
include each claim argued separately (see Proposed Bd.R. 41.37(o)(1))
that contains a limitation that appellant regards as a means or step
plus function limitation in the form permitted by the sixth paragraph
of 35 U.S.C. 112. Further, for each such claim, a copy of the claim
would be reproduced indicating in bold face between braces ({}) the
specific portions of the specification and drawing that describe the
structure material or acts corresponding to each claimed function. If
the appealed claims do not contain any means or step plus function
limitations, the section would state that there is no means or step
plus function limitation in any claim on appeal. The Office is
proposing to require a particular format for the means or step plus
function analysis section to avoid the confusion that arises from the
variety of ways appellants employ under current practice in attempting
to comply with the requirements of Bd.R. 41.37(c)(1)(v). A means or
step plus function analysis essentially tracking Proposed Bd.R.
41.37(s) has been used in interference cases since 1998 and has been
helpful in determining the scope of claims involved.
Proposed Bd.R. 41.37(t) would require an appeal brief to contain an
"evidence section" in the appendix. The evidence section continues,
in part, the practice under Bd.R. 41.37(c)(1)(ix). The evidence section
and any supplemental appendix filed pursuant to Proposed Bd.R.
41.41(h), as well as the specification, any drawings, and any cited
U.S. patents and published U.S. applications, would constitute the
record upon which the appeal would be decided. The word "evidence"
would be construed broadly and would include amendments, affidavits or
declaration, non-patent literature, foreign patents and publications,
published PCT documents, and any other material admitted into the
record by the examiner. The evidence section would include (1) table of
contents, (2) the Office action setting out the rejection on appeal
(including any Office action that may be incorporated by reference),
(3) all evidence (except the specification, any drawings, U.S. patents
and published U.S. applications) upon which the examiner relied in
support of the rejection on appeal, (4) the relevant portion of papers
filed by the appellant during prosecution before the examiner which
show that an argument being made on appeal was made in the first
instance to the examiner, (5) affidavits or declarations upon which the
appellant relied before the examiner, and (6) other evidence upon which
the appellants relied before the examiner. If the examiner believes
that other material should be included in the evidence section, the
examiner would be able to attach that evidence to the examiner's
answer. Pursuant to Proposed Bd.R. 41.37(v)(1), all pages of an appeal
brief or a reply brief (including appendices to those briefs) would be
consecutively numbered beginning with page 1. Appeal briefs, examiner's
answers, reply briefs, supplemental examiner's answers, supplemental
reply briefs, and opinions of the Board would be able to cite the
"record" by reference to a page of the evidence section or any
supplemental appendix. If the appellant, the examiner, and the Board
all cite to a well-defined record, confusion over what a reference to a
piece of evidence means should be diminished.
Proposed Bd.R. 41.37(u) would require an appeal brief to contain a
"related cases section" in the appendix. The related cases section
would consist of copies of orders and opinions required to be cited
pursuant to Proposed Bd.R. 41.37(g).
Proposed Bd.R. 41.37(v) would require an appeal brief to be presented
in a particular format. The appeal brief would have to comply with the
format of Rule 52 as well as with other requirements set out in
Proposed Bd.R. 41.37(v)(1) through (6).
Proposed Bd.R. 41.37(v)(1) would require that the pages of an appeal
brief, including all appendices, would be consecutively numbered using
Arabic numerals beginning with the first page of the appeal brief,
which would be numbered page 1. This practice would prevent (1)
re-starting numbering with each section of the appendix or (2) using
Roman numeral page numbers, e.g., I, II, V, etc., or page numbers with
letters, e.g., "a", "b", "c", "i", "ii", etc. The
lines on each page of the appeal brief, and where practical, the
appendices, would be consecutively line numbered beginning with line 1
at the top of each page. Line numbering has been used for some time in
interference cases and has been found to be useful when making
reference in oppositions, replies, and opinions of the Board.
Proposed Bd.R. 41.37(v)(2) would require that text in an appeal brief
would be double spaced except in headings, tables of contents, tables
of authorities, signature blocks and certificates of service. Block
quotations would be indented. Footnotes, which are discouraged, would
have to be double spaced.
Proposed Bd.R. 41.37(v)(3) would require that margins shall be at least
one inch (2.5 centimeters) on all sides. Line numbering could appear
within the left margin.
Proposed Bd.R. 41.37(v)(4) would require that the font would be
readable and clean and equivalent to 14 point Times New Roman,
including the font for block quotations and footnotes.
Proposed Bd.R. 41.37(v)(5) would provide that an appeal brief may not
exceed 25 pages, excluding any (1) statement of the real party in
interest, (2) statement of related cases, (3) table of contents, (4)
table of authorities, (5) signature block and (6) appendix. To give
meaning to the 25-page limitation, an appeal brief would not be
permitted to incorporate by reference arguments from other papers in
the evidence appendices or from any other source. The prohibition
against incorporation by reference is necessary to prevent an appellant
from adding to the length of an appeal brief. Cf. DeSilva v.
DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) ("[A]doption
by reference amounts to a self-help increase in the length of the
appellate brief. *** [I]ncorporation by reference is a pointless
imposition on the court's time. A brief must make all arguments
accessible to the judges, rather than ask them to play archaeologist
with the record.") (citation omitted). A prohibition against
incorporation by reference has been the practice in interference cases
since 1998 and has minimized the chance that an argument is overlooked.
Proposed Bd.R. 41.37(v)(6) would require a signature block which would
identify the appellant or appellant's representative, as appropriate,
and a mailing address, telephone number, fax number and e-mail address.
Examiner's answer
Proposed Bd.R. 41.39(a) would provide that within such time and manner
as may be directed by the Director and if the examiner determines that
the appeal should go forward, the examiner shall enter an examiner's
answer responding to the appeal brief. The specific requirements of
what would be required in an examiner's answer would appear in the
Manual of Patent Examining Procedure.
Proposed Bd.R. 41.39(b) would provide that an examiner's answer may
include a new rejection. In the past, the rules and the MPEP have used
the phrase "new ground of rejection." The phrase "new
rejection" implies that the ground, or basis, for the rejection is
new. Accordingly, in Proposed Bd.R. 41.39(b) and elsewhere in the
proposed rules, the phrase "new rejection" rather than "new
ground of rejection" is used. If an examiner's answer contains a
rejection designated as a new rejection, appellant, within two months
from the date of the examiner's answer, would be required to exercise
one of two options or the application will be deemed to be abandoned or
the reexamination proceeding will be deemed to be terminated.
Proposed Bd.R. 41.39(b)(1) would provide that the first option would be
to request that prosecution be reopened before the examiner by filing a
reply under Sec. 1.111 of this title with or without amendment or
submission of evidence. Any amendment or evidence would have to be
relevant to the new rejection. A request that complies with this
paragraph would be entered and the application or patent under
reexamination would be reconsidered by the examiner under the
provisions of Sec. 1.112 of this title. A request under this paragraph
would be treated as a request to withdraw the appeal.
Proposed Bd.R. 41.39(b)(2) would provide that the second option would
be to request that the appeal be maintained by filing a reply brief as
set forth in Proposed Bd.R. 41.41. A reply brief could not be
accompanied by any amendment or evidence, except an amendment canceling
one or more claims which are subject to the new rejection. A reply
brief which is accompanied by evidence or any other amendment would be
treated as a request to reopen prosecution pursuant to Proposed Bd.R.
41.39(b)(1).
Proposed Bd.R. 41.39(c) would provide that the time for filing a
request under Proposed Bd.R. 41.39(b)(1) would be extendable under the
provisions of Rule 136(a) as to applications and under the provisions
of Rule 550(c) as to reexamination proceedings. However, a request for
an extension of time for filing a request under Proposed Bd.R.
41.39(b)(2) would have to be presented as a petition under Proposed
Bd.R. 41.3(a) and (c). A decision on the petition would be made by the
Chief Administrative Patent Judge or an employee to whom the Chief
Administrative Patent Judge has delegated authority to make the
decision. The decision would be governed by Rule 41.4(a). The reason
for the requirement for a petition is to minimize the time an appeal is
pending. In the past, appellants have taken advantage of the provisions
of Rule 136(a) to file a reply to maintain the appeal. The length of
possible patent term adjustment (35 U.S.C. 154(b)(2)(iii)) is based on
the time an appeal is pending. The provisions of Rule 136(a) are not
consistent with efficient handling of appeals after the time an appeal
brief is filed. The Office does not believe that an applicant should be
able to add to any patent term adjustment by the automatic extensions
of time that are available through Rule 136(a). Appellants should
expect strict application of the "good cause" standard of Bd.R.
Rule 41.4(a).
Reply brief
Proposed Bd.R. 41.41(a) would provide that an appellant may file a
single reply brief responding to the examiner's answer.
Proposed Bd.R. 41.41(b) would provide that the time for filing a reply
brief would be within two months of the date the examiner's answer is
entered.
Proposed Bd.R. 41.41(c) would provide that a request for an extension
of time shall be presented as a petition under Sec. 41.3(a) and (c) of
this part. A decision on the petition shall be governed by Sec. 41.4(a)
of this part. The provisions of Rule 136(a) would no longer apply to
extensions of time to file a reply brief.
Proposed Bd.R. 41.41(d) would provide that a reply brief shall be
limited to responding to points made in the examiner's answer. Except
as otherwise set out in these proposed rules, the form and content of a
reply brief would be governed by the requirements for an appeal brief
as set out in Proposed Bd.R. 41.37. A reply brief would not be able to
exceed fifteen pages, excluding any (1) table of contents, (2) table of
authorities, (3) statement of timeliness, (4) signature block and (5)
supplemental appendix. A reply brief would be required to contain,
under appropriate headings and in the order indicated, the following
items: (1) table of contents, (2) table of authorities, (3) statement
of timeliness, (4) statement of facts in response to any new rejection
in examiner's answer, (5) argument, and, where appropriate, (6)
supplemental appendix. If the examiner's answer contains a new
rejection, designated as such, the page limit would be twenty-five
pages and not fifteen pages.
Proposed Bd.R. 41.41(e) would require a reply brief to contain a
statement of timeliness. The statement of timeliness would have to
establish that the reply brief is being timely filed by including a
statement of the date the examiner's answer was entered and the date
the reply brief is being filed. If the reply brief is filed after the
time specified in this subpart, appellant must indicate the date an
extension of time was requested and the date the request was granted.
An example of a statement of timeliness would be: "The examiner's
answer was entered on October 14, 2006. The time for filing a reply
brief expired on December 14, 2006. Bd.R. 41.41(b). A request for
extension of time to file the reply brief on December 21, 2006, was
filed on December 1, 2006, and was granted by the Chief Administrative
Patent Judge on December 10, 2006. The reply brief is being timely
filed on December 21, 2006." A reply brief which is not timely filed
would not be considered by the examiner or the Board.
Proposed Bd.R. 41.41(f) would require a statement of additional facts,
but only when the appellant has elected to file a reply brief in
response to a new rejection in an examiner's answer entered pursuant to
Proposed Bd.R. 41.39(b)(2). When a statement of additional facts is
required, it would have to meet the requirements of Proposed Bd.R.
41.37(n), but would have to be limited to facts relevant to the new
rejection. If there is no new rejection in the examiner's answer, there
would be no statement of additional facts.
Proposed Bd.R. 41.41(g) would require that an argument appear in the
reply brief, which would be limited to responding to points made in the
examiner's answer. No general restatement of the case would be
permitted in a reply brief. An argument which could have been, but
which was not, made in the appeal brief cannot be made in a reply
brief. The Office has found a restatement of the case in a reply brief
to be a serious distraction. Adding details or additional arguments, if
not responsive to points made by the examiner, does not contribute to
the efficient handling of appeals. As a result of appellants adding new
details and arguments, an examiner often has to enter a supplemental
examiner's answer to respond to details and arguments not previously
considered by the examiner and that should have been presented in the
appeal brief. An example of an acceptable format for presenting an
argument in a reply brief (where there was no new rejection in the
examiner's answer) might read as follows: First paragraph: "This is a
reply to the examiner's answer entered [insert the date the answer was
entered]." Last paragraph: "For the reasons given in this reply
brief and in the appeal brief, reversal of the examiner's rejection is
requested." All paragraphs between the first and last paragraphs
would read: "On page x, lines y-z of the examiner's answer, the
examiner states that [state what the examiner states]. The response
is [concisely state the response]." As part of each response, the
appellant would have to refer to the page number and line or drawing
element number of the evidence section. Any response which is not
concise probably would not comply with Proposed Bd.R. 41.41(g).
Frequently, new details and arguments surface in reply briefs. By
Proposed Bd.R. 41.41(g), the Office seeks to confine reply briefs to
what they ought to be - a response to points raised in the examiner's
answer. If Proposed Bd.R. 41.41 is promulgated and, notwithstanding
what the rule seeks to achieve, it turns out that too many resources of
the Office are needed to enforce the reply brief rule and considerable
time is wasted in resolving improper reply brief issues. Consideration
could be given to further limiting the nature of replies filed in ex
parte appeals.
Proposed Bd.R. 41.41(h) would require that a supplemental appendix be
made part of the reply brief if the examiner entered a new rejection in
the examiner's answer and appellant elects to respond to the new
rejection in a reply brief. The supplemental appendix would include (1)
table of contents, (2) examiner's answer, and (3) all evidence relied
upon by the examiner in support of the new rejection which does not
already appear in the evidence section of the appendix accompanying the
appeal brief, except the specification, any drawings, U.S. patents and
published U.S. applications.
Proposed Bd.R. 41.41(i) would provide that an amendment or new evidence
may not accompany a reply brief. The Office has found that appellants
continue to attempt to file amendments and evidence with reply briefs.
If an appellant, after reviewing the examiner's answer, believes that
an amendment is appropriate, the appellant may file a request for
continued examination or, in the case of a reexamination proceeding,
ask that the proceeding be reopened.
Examiner's response to reply brief
Proposed Bd.R. 41.43 would provide that upon consideration of a reply
brief, the examiner may withdraw a rejection and reopen prosecution or
may enter a supplemental examiner's answer responding to the reply
brief.
Supplemental reply brief
Proposed Bd.R. 41.44(a) would provide that, if the examiner enters a
supplemental examiner's answer, the appellant would be able to file a
single supplemental reply brief responding to the supplemental
examiner's answer.
Proposed Bd.R. 41.44(b) would provide that the appellant would have to
file a supplemental reply brief within two months from the date of the
filing of the examiner's supplemental answer.
Proposed Bd.R. 41.44(c) would provide that a request for an extension
of time shall be presented as a petition under Proposed Bd.R. 41.3(a)
and (c). A decision on the petition shall be governed by Bd.R. 41.4(a).
Proposed Bd.R. 41.44(d) would provide that, except as otherwise set out
in this rule, the form and content of a supplemental reply brief are
governed by the requirements for appeal briefs as set out in Proposed
Bd.R. 41.37. A supplemental reply brief would have to contain, under
appropriate headings and in the order indicated, the following items:
(1) table of contents, (2) table of authorities, (3) statement of
timeliness, and (4) argument. Proposed Bd.R. 41.44(d) would also
provide that the argument portion of a supplement reply brief would be
limited to ten pages and to responding to points made in the
supplemental examiner's answer. A request to exceed the page limit
would be presented as a petition under Proposed Bd.R. 41.3.
Proposed Bd.R. 41.44(e) would provide that a supplemental reply brief
would have to contain a statement of timeliness, including a statement
of the date the supplemental examiner's answer was entered and the date
the supplemental reply is being filed. If the supplemental reply brief
is filed after the time specified in this subpart, appellant would have
to indicate the date an extension of time was requested and the date
the request was granted.
Proposed Bd.R. 41.44(f) would provide that a supplemental reply brief
shall be limited to responding to points made in the supplemental
examiner's answer. The supplemental reply brief preferably would adhere
to the following format: "On page x, lines y-z of the supplemental
examiner's answer, the examiner states that [state what the examiner
states]. The response is [state the response]." As part of each
response, appellant would have to refer to the page number and line or
drawing number of the evidence section of the appendix accompanying the
appeal brief or supplemental appendix accompanying the reply brief. No
general restatement of the case would be permitted in a supplemental
reply brief. A new argument would not be able to be made in a
supplemental reply brief.
Proposed Bd.R. 41.44(g) would provide that an amendment or new evidence
may not accompany a supplemental reply brief.
Oral hearing
Proposed Bd.R. 41.47(a) would provide that if the appellant desires an
oral hearing, appellant must file, as a separate paper, a written
request captioned: "REQUEST FOR ORAL HEARING."
Proposed Bd.R. 41.47(b) would provide that a request for oral hearing
shall be accompanied by the fee required by Sec. 41.20(b)(3).
Proposed Bd.R. 41.47(c) would provide that the time for filing a
request for an oral hearing would be within two months of the date of
entry of the examiner's answer or a supplemental examiner's answer.
Proposed Bd.R. 41.47(d) would provide that a request for an extension
of time to request an oral hearing would have to be presented as a
petition under Sec. 41.3(a) and (c) of this part. A decision on the
petition shall be governed by Sec. 41.4(a) of this part.
Proposed Bd.R. 41.47(e) would provide that if an oral hearing is
properly requested, a date for the oral hearing would be set.
Proposed Bd.R. 41.47(f) would provide that if an oral hearing is set,
then within such time as the Board may order, appellant shall confirm
attendance at the oral hearing. Failure to timely confirm attendance
would be taken as a waiver of any request for an oral hearing.
Proposed Bd.R. 41.47(g) would provide that at the time appellant
confirms attendance at the oral hearing, appellant would be required to
supply a list of technical terms and other unusual words which can be
provided to any individual transcribing an oral hearing. The current
practice of the Board is to transcribe all oral arguments. A list of
technical terms provided by appellant should improve the accuracy of
any transcript.
Proposed Bd.R. 41.47(h) would provide that unless otherwise ordered by
the Board, argument on behalf of appellant at an oral hearing would be
limited to 20 minutes.
Proposed Bd.R. 41.47(i) would provide that at oral hearing only
evidence that has been previously presented to, entered by and
considered by the primary examiner would be considered and that no
additional evidence may be offered to the Board in support of the
appeal. An argument not presented in a brief could not be made at the
oral hearing.
Proposed Bd.R. 41.47(j) would provide that notwithstanding Proposed
Bd.R. 41.47(i), an appellant could rely on and call the Board's
attention to a recent court or Board opinion which could have an effect
on the manner in which the appeal is decided.
Proposed Bd.R. 41.47(k) would provide that visual aids may be used at
an oral hearing. However, visual aids must be limited to copies of
documents in the record on appeal. A document not previously entered by
the examiner could not be used as a visual aid. When an appellant seeks
to use a visual aid, one copy should be provided for each judge and one
copy for the record of the appeal.
Proposed Bd.R. 41.47(l) would provide that failure of an appellant to
attend an oral hearing would be treated as a waiver of the oral
hearing. Over the years the Board has become concerned with the large
number of requests for postponements. In some cases, multiple requests
in a single appeal are submitted for postponement of an oral hearing.
Apart from the fact that a postponement can lead to large patent term
adjustments, efficiency dictates that the Board be able to set an oral
hearing schedule with an expectation that in a large majority of the
cases the oral hearing will timely occur or the appellant will waive
oral hearing. The Board will continue to handle requests for
postponement of oral hearings on an ad hoc basis. However,
postponements would no longer be granted on a routine basis. A request
for a postponement made immediately after a notice of oral hearing is
mailed is more likely to receive favorable treatment, particularly
since it may be possible to set an oral hearing date prior to the
originally scheduled oral hearing date.
Decisions and other actions by the Board
Proposed Bd.R. 41.50(a) would provide that the Board may affirm or
reverse a decision of the examiner in whole or in part on the grounds
and on the claims specified by the examiner. Proposed Bd.R. 41.50(a)
would continue the practice that an affirmance of a rejection of a
claim on any of the grounds specified constitutes a general affirmance
of the decision of the examiner on that claim, except as to any ground
specifically reversed.
Proposed Bd.R. 41.50(b) would provide that the Board may remand an
application to the examiner. Upon entry of a remand, the Board would no
longer have jurisdiction unless an appellant timely files a request for
rehearing. If the request for rehearing does not result in modification
of the remand, the Board would then lose jurisdiction. Upon remand,
should examiner enter a supplemental examiner's answer in response to
the remand, appellant would be required to exercise one of two options
to avoid abandonment of the application or termination of the
reexamination proceeding. Either option would have to be exercised
within two months from the date of the supplemental examiner's answer.
Proposed Bd.R. 41.50(b)(1) specifies the first option and would provide
that appellant could request that prosecution be reopened before the
examiner by filing a reply under Rule 111, with or without amendment or
submission of evidence. Any amendment or evidence would have to be
relevant to the issues set forth in the remand or raised in the
supplemental examiner's answer. A request that complies with this
paragraph would be entered and the application or patent under
reexamination would be reconsidered by the examiner under the
provisions of Rule 112. A request under Proposed Bd.R. 41.50(b)(1)
would be treated as a request to dismiss the appeal.
Proposed Bd.R. 41.50(b)(2) specifies the second option and would
provide that appellant could request that the appeal be re-docketed.
The request would have to be accompanied by a reply brief as set forth
in Proposed Bd.R. 41.41. An amendment or evidence could not accompany
the reply brief. A reply brief that is accompanied by an amendment or
evidence would be treated as a request to reopen prosecution pursuant
to Proposed Bd.R. 41.50(b)(1).
Proposed Bd.R. 41.50(c) would provide that a remand is not a final
decision. Following proceedings on remand, and with respect to affirmed
rejections and claims not involved in the remand, an appellant could
request the Board to enter a final decision so that the appellant could
then seek judicial review as to those rejections and claims. Only a
final decision of the Board is subject to appeal. Copelands'
Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562
(Fed. Cir. 1989) (en banc).
Proposed Bd.R. 41.50(d) would provide that, should the Board have
knowledge of a basis not involved in the appeal for rejecting a pending
claim, the Board may enter a new rejection. A pending claim could be a
claim not rejected by the examiner. A new rejection would not be
considered final for purposes of judicial review. A new rejection is
not considered a final agency action because the appellant has not
explained to the Board, without amendment or new evidence, or to the
Office, with an amendment or new evidence or both, why the rejection is
not proper. Proposed Bd.R. 41.50(d) places an appellant under a burden
to explain to the Board or the Office why a new rejection is not proper
before it burdens a court with judicial review. A response by an
appellant may convince the Office that a new rejection should be
withdrawn. If the Board enters a new rejection, appellant would have to
exercise one of two options with respect to the new rejection to avoid
dismissal of the appeal as to any claim subject to the new rejection.
Either option would have to be exercised within two months from the
date of the new rejection.
Proposed Bd.R. 41.50(d)(1) specifies that a first option would be to
submit an amendment of the claims subject to a new rejection or new
evidence relating to the new rejection or both and request that the
matter be reconsidered by the examiner. The proceedings would be
remanded to the examiner. A new rejection would be binding on the
examiner unless, in the opinion of the examiner, the amendment or new
evidence overcomes the new rejection. In the event the examiner
maintains the rejection, appellant would be able to again appeal to the
Board.
Proposed Bd.R. 41.50(d)(2) specifies that a second option would be to
request rehearing pursuant to Proposed Bd.R. 41.52. The request for
rehearing would have to be based on the record before the Board and no
new evidence or amendments would be permitted.
Proposed Bd.R. 41.50(e) would provide that the Board, in its opinion in
support of its decision, could include a recommendation, explicitly
designated as such, of how a claim on appeal may be amended to overcome
a specific rejection. For the recommendation to be binding, it would
have to be explicitly designated as a recommendation. For example, a
conclusion or comment by the Board that a claim, notwithstanding
appellant's argument, is so broad as to read on the prior art should
not be taken as a recommendation that if some undefined limitation is
added the claim would be patentable. When the Board makes a
recommendation, appellant may file an amendment in conformity with the
recommendation. An amendment in conformity with the recommendation
would be deemed to overcome the specific rejection. An examiner would
have authority to enter an additional rejection of a claim amended in
conformity with a recommendation provided that the additional rejection
constitutes a new rejection. For example, the examiner may know of
additional prior art not known to the Board that would meet the claim
as amended. It is because of the possibility that an examiner may know
of additional prior art that a recommendation would be expected to be a
relatively rare event.
Proposed Bd.R. 41.50(f) would provide that the Board could enter an
order requiring appellant to brief additional issues or supply
additional evidence or both if the Board believes doing so would be of
assistance in reaching a decision on the appeal. Proposed Bd.R.
41.50(f) continues a practice which has been in existence since 1999.
See, e.g., (1) 37 CFR 1.196(d) (1999) and (2) Bd.R.
41.50(d). Practice under Bd.R. 41.50(d) has been highly useful and
complements the authority of Office personnel to request additional
material under Rule 105. Appellant would be given a non-extendable time
period within which to respond to the order. In setting the length of
the non-extendable time period, the Board would take into account the
extent of the information requested and the time of year a response
would be due. For example, it is not likely that the Board would set a
date for response between Christmas Day and New Year's Day. Failure of
appellant to timely respond to the order could result in dismissal of
the appeal in whole or in part. An appeal might be dismissed in part if
the order sought further briefing or evidence or both related to one
rejection but not another rejection, particularly where the two
rejections apply to different claims.
Proposed Bd.R. 41.50(g) would provide for extensions of time to respond
to actions of the Board under Proposed Bd.R. 41.50(b) and (d). Proposed
Bd.R. 41.50(g) would provide that a request for an extension of time to
respond to a request for briefing and information under Proposed Bd.R.
41.50(f) is not authorized. A request for an extension of time to
respond to Board action under Proposed Bd.R. 41.50(b) and (d) would be
presented as a petition under Bd.R. 41.3(a) and (c). A decision on the
petition shall be governed by Bd.R. 41.4(a).
Rehearing
Proposed Bd.R. 41.52(a) would authorize an appellant to file a single
request for rehearing.
Proposed Bd.R. 41.52(b) would provide that a request for rehearing
would be due within two months from the date of the decision entered by
the Board.
Proposed Bd.R. 41.52(c) would provide that a request for an extension
of time would have to be presented as a petition under Proposed Bd.R.
41.3(a) and (c). A decision on the petition would be governed by Bd.R.
41.4(a).
Proposed Bd.R. 41.52(d) would provide that a request for rehearing
shall state with particularity the points believed to have been
misapprehended or overlooked by the Board. A request for rehearing
would not be able to exceed ten pages, excluding any table of contents,
table of authorities, statement of timeliness and signature block. A
request for rehearing would have to contain, under appropriate headings
and in the order indicated, the following items: (1) table of contents,
(2) table of authorities, (3) statement of timeliness, and (4)
argument.
Proposed Bd.R. 41.52(e) would provide that a statement of timeliness
establish that the request for rehearing was timely filed by including
a statement of the date the decision sought to be reheard was entered
and the date the request for rehearing is being filed. If the request
for rehearing is filed after the time specified in this subpart,
appellant would be required to indicate the date an extension of time
was requested and the date the request was granted.
Proposed Bd.R. 41.52(f) would provide that in a request for rehearing,
the argument preferably should adhere to the following format: "On
page x, lines y-z of the Board's opinion, the Board states that [set
out what was stated]. The point misapprehended or overlooked was made
to the Board in [identify paper, page and line where argument was made
to the Board]. The response is [state response]." As part of each
response, appellant shall refer to the page number and line or drawing
element number of the evidence section. No general restatement of the
case would be permitted in a request for rehearing. A new argument
could not be made in a request for rehearing, except in two instances.
Proposed Bd.R. 41.52(f)(1) would authorize in a first instance an
appellant to respond to a new rejection entered pursuant to Proposed
Bd.R. 41.50(d)(2).
Proposed Bd.R. 41.52(f)(2) would authorize an appellant to rely on and
call the Board's attention to a recent decision of a court or the Board
that is relevant to an issue decided in the appeal. Generally, the
recent court decision would be a decision of the Supreme Court or the
Court of Appeals for the Federal Circuit.
Proposed Bd.R. 41.52(g) would provide that an amendment or new evidence
could not accompany a request for rehearing.
Proposed Bd.R. 41.52(h) would provide that a decision will be rendered
on a request for rehearing. The decision on rehearing would be deemed
to incorporate the decision sought to be reheard except for those
portions of the decision sought to be reheard specifically modified on
rehearing. A decision on rehearing would be considered final for
purposes of judicial review, except when otherwise noted in the
decision on rehearing.
Action following decision
Proposed Bd.R. 41.54 would provide that, after a decision by the Board
and subject to appellant's right to seek judicial review, the
proceeding will be returned to the examiner for such further action as
may be consistent with the decision by the Board.
Sanctions
Proposed Bd.R. 41.56 would provide for sanctions.
Proposed Bd.R. 41.56(a) would provide that a sanction could be imposed
against an appellant for misconduct, including, (1) failure to comply
with an order entered in the appeal or an applicable rule, (2)
advancing or maintaining a misleading or frivolous request for relief
or argument, or (3) engaging in dilatory tactics.
Proposed Bd.R. 41.56(b) would provide that the nature of possible
sanctions, includes entry of (1) an order declining to enter a
docketing notice, (2) an order holding certain facts to have been
established in the appeal, (3) an order expunging a paper or precluding
an appellant from filing a paper, (4) an order precluding an appellant
from presenting or contesting a particular issue, (5) an order
excluding evidence, (6) an order requiring a terminal disclaimer of
patent term, (7) an order holding an application on appeal to be
abandoned or a reexamination proceeding terminated, (8) an order
dismissing an appeal, (9) an order denying an oral hearing, or (10) an
order terminating oral hearing.
Whether and which sanction, if any, should be imposed in any specific
circumstance would be matters within the discretion of the Board.
Rule Making Considerations
Administrative Procedure Act
The notable changes in the proposed rules are: (1) providing additional
delegated authority from the Director to the Chief Administrative
Patent Judge to decide certain petitions authorized by Part 41 as
proposed, including requests for extension of time to file certain
papers after the appeal brief and requests to enlarge the page limit on
certain appeal papers; (2) defining the record on appeal to clarify
what documents the Board will consider in resolving the appeal; (3)
requiring the notice of appeal to be signed; (4) providing a definition
of non-appealable issues; (5) transferring jurisdiction of an appeal to
the Board upon entry of a docket notice by the Board; (6) relinquishing
the Board's jurisdiction in an appeal when the Board orders a remand or
enters a final decision and judicial review is sought or the time for
seeking judicial review expires; (7) changing the format and content of
the appeal brief to require the following additional sections: (a)
jurisdictional statement, (b) table of contents, (c) table of
authorities, and (d) statement of facts; (8) changing the format and
content of the appeal brief appendix to include the following
additional sections: (a) claim support section, (b) drawing analysis
section, (c) means or step plus function analysis section, and (d) an
expanded evidence section to include, inter alia, relevant
Office action(s) and portions of papers filed by appellant during
prosecution; (9) providing page limits for all briefs; (10) prohibiting
incorporation by reference in briefs; (11) establishing a format for a
reply brief to include: (a) table of contents, (b) table of
authorities, (c) statement of timeliness, (d) statement of facts in
response to a new ground of rejection in examiner's answer, (e)
argument, and where appropriate, (f) supplemental appendix; (12)
providing for a supplemental reply brief, if a supplemental examiner's
answer is furnished by the examiner; (13) establishing a format for a
supplemental reply brief to include: (a) table of contents, (b) table
of authorities, (c) statement of timeliness, and (d) argument; (14)
requiring appellant to supply a list of technical terms and other
unusual words at the time of confirmation of the oral hearing to aid in
transcription at the oral hearing; (15) eliminating requests for
extension of time to respond to a request for further briefing and
information by the Board; (16) establishing a format for a request for
rehearing to include: (a) table of contents, (b) table of authorities,
(c) statement of timeliness, and (d) argument; and (17) providing
sanctions to be imposed on the appellant for misconduct during
prosecution of the appeal.
The changes in the proposed rules relate solely to the procedure to be
followed in filing and prosecuting an ex parte appeal to the Board.
Therefore, these rule changes involve interpretive rules, or rules of
agency practice and procedure under 5 U.S.C. 553(b)(A), and prior
notice and an opportunity for public comment are not required pursuant
to 5 U.S.C. 553(b)(A) (or any other law). See Bachow
Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001)
(rules governing an application process are "rules of agency
organization, procedure, or practice" and exempt from the
Administrative Procedure Act's notice and comment requirement);
Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38
USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2))
are not substantive rules (to which the notice and comment requirements
of the Administrative Procedure Act apply)); Fressola v.
Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it is extremely
doubtful whether any of the rules formulated to govern patent and
trade-mark practice are other than 'interpretive rules, general
statements of policy, . . . . procedure, or practice'" (quoting C.W.
Ooms, The United States Patent Office and the Administrative
Procedure Act, 38 Trademark Rep. 149, 153 (1948)); Eli
Lilly & Co. v. Univ. of Washington, 334 F.3d 1264, 1269 n.1, 67
USPQ2d 1161, 1165 n.1 (Fed. Cir. 2003) (add parenthetical).
Regulatory Flexibility Act
As previously discussed, the changes in the proposed rules involve
interpretive rules, or rules of agency practice and procedure, and
prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553(b)(A) (or any other law). Because prior notice
and an opportunity for public comment are not required for the changes
in the proposed rules, a final Regulatory Flexibility Act analysis is
also not required for the changes in the proposed rules.
See 5 U.S.C. 603. Nevertheless, the USPTO is publishing a
notice of proposed rule making in the Federal Register and in the
Official Gazette of the United States Patent and Trademark Office, in
order to solicit public participation with regard to this rule package.
The USPTO received approximately 443,000 patent applications in Fiscal
Year 2006. The proposed rules apply only to those applications where an
appeal brief is filed with the Board. In Fiscal Year 2006,
approximately 18,500 appeal briefs were filed. Of those 18,500 appeal
briefs, approximately 4,000 were filed by small entities. Thus, the
number of small entities affected by these proposed rule changes is not
substantial (approximately 0.9%). Also, the proposed rules do not
disproportionately impact small entities.
The proposed rules which change the format and content of briefs may
require the appellant to spend additional time in preparing a compliant
brief. The effect of such rules, however, will be to enhance the
likelihood that the appealed claims will be allowed without the
necessity of further proceeding with the appeal and improve the
efficiency of the decision-making process at the Board. Any additional
time burden that is imposed by the proposed rules relating to briefs is
believed to be de minimus in comparison to the reduction in
pendency that appellant gains as a result of early identification of
allowable claims or a more efficient decision-making process. Moreover,
the fees associated with filing an appeal with the Board are set by
statute, and are not proposed for change in this rule making. These
proposed procedural rules do not significantly increase the cost of
filing or prosecuting an appeal before the Board.
Accordingly, these proposed rules do not have significant economic
impact on a substantial number of small entities.
Executive Order 13132
This rule making does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined to be not significant for purposes
of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This proposed rule involves information collection requirements which
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collection of information involved in this proposed rule has been
reviewed and previously approved by OMB under control number 0651-0031.
The United States Patent and Trademark Office is not resubmitting an
information collection package to OMB for its review and approval
because the changes in this proposed rule would not affect the
information collection requirements associated with the information
collection under OMB control number 0651-0031.
Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert Clarke, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
D.C. 20231, or to the Office of Information and Regulatory Affairs,
OMB, 725 17th Street, N.W., Washington, D.C. 20503, (Attn:
PTO Desk Officer).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 41
Administrative practice and procedure, Inventions and Patents,
Lawyers
For the reasons stated in the preamble, the Under Secretary of Commerce
for Intellectual Property and Director of the United States Patent and
Trademark Office proposes to amend 37 CFR part 41 as follows:
1. The authority citation for Part 41 is amended to read as follows:
Part 41 - Practice Before the Board of Patent Appeals and
Interferences Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32,
132, 133, 134, 135, 306, and 315.
Subpart A - General Provisions
1. In Sec. 41.2, revise the definitions of Board and Contested Case
to read as follows:
Sec. 41.2 Definitions.
*****
Board means the Board of Patent Appeals and Interferences and includes:
(1) For a final Board action in an appeal or contested case, a
panel of the Board.
(2) For non-final actions, a Board member or employee acting with
the authority of the Board.
*****
Contested case means a Board proceeding other than an appeal under 35
U.S.C. 134. An appeal in an inter partes reexamination proceeding is not
a contested case.
*****
2. In Sec. 41.3, revise paragraphs (a) and (b) to read as follows:
Sec. 41.3 Petitions.
(a) Deciding official. A petition authorized by this part
must be addressed to the Chief Administrative Patent Judge. In addition
to complying with all other requirements of this title, a copy of the
petition must also be forwarded to the Office addressed to: Chief
Administrative Patent Judge, Board of Patent Appeals and Interferences,
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
VA 22313-1450. The Chief Administrative Patent Judge may delegate
authority to decide petitions.
(b) Scope. This section covers petitions on matters pending
before the Board, petitions authorized by this part and petitions
seeking relief under 35 U.S.C. 135(c); otherwise see Secs. 1.181 to
1.183 of this title. The following matters are not subject to petition:
(1) Issues committed by statute to a panel.
(2) In pending contested cases, procedural issues. See Sec.
41.121(a)(3) and Sec. 41.125(c).
*****
3. In Sec. 41.4, revise paragraphs (b) and (c) to read as follows:
Sec. 41.4 Timeliness.
*****
(b) Late filings.
(1) A request to revive an application which becomes abandoned or
a reexamination proceeding which becomes terminated under Secs.
1.550(d) or 1.957(b) or (c) of this title as a result of a late
filing may be filed pursuant to Secs. 1.137 of this title.
(2) A late filing that does not result in an application becoming
abandoned or a reexamination proceeding becoming terminated under
Secs. 1.550(d) or 1.957(b) or (c) of this title may be excused upon
a showing of excusable neglect or a Board determination that
consideration on the merits would be in the interests of justice.
(c) Scope. Except to the extent provided in this part, this
section governs proceedings before the Board, but does not apply to
filings related to Board proceedings before or after the Board has
jurisdiction (Sec. 41.35), such as:
(1) Extensions during prosecution (see Sec. 1.136 of this title).
(2) Filing of a notice of appeal and an appeal brief (see Secs.
41.31(c) and 41.37(c)).
(3) Seeking judicial review (see Secs. 1.301 to 1.304 of this
title).
Subpart B - Ex Parte Appeals
4. Revise Sec. 41.30 to add a definition of "record on appeal"
to read as follows:
Sec. 41.30 Definitions.
*****
Record on appeal. The record on appeal consists of
the specification, drawings, if any, U.S. patents cited by the examiner
or appellant, published U.S. applications cited by the examiner or
appellant, the appeal brief, including all appendices, the examiner's
answer, any reply brief, including any supplemental appendix, any
supplemental examiner's answer, any supplemental reply brief, any
request for rehearing, any order or decision entered by the Board or
the Chief Administrative Patent Judge, and any other document or
evidence which was considered by the Board as indicated in any opinion
accompanying any order or decision.
5. Revise Sec. 41.31 to read as follows:
Sec. 41.31 Appeal to Board.
(a) Notice of Appeal. An appeal is taken to the Board by
filing a notice of appeal.
(b) Fee. The notice of appeal shall be accompanied by the
fee required by Sec. 41.20(b)(1).
(c) Time for filing notice of appeal. A notice of appeal
must be filed within the time period provided under Sec. 1.134 of this
title.
(d) Extensions of time to file notice of appeal. The time
for filing a notice of appeal is extendable under the provisions of Sec.
1.136(a) of this title for applications and Sec. 1.550(c) of this title
for ex parte reexamination proceedings.
(e) Non-appealable issues. A non-appealable issue is an
issue not subject to an appeal under 35 U.S.C. 134. An applicant or
patent owner dissatisfied with a decision of an examiner on a
non-appealable issue shall timely seek review by petition before
jurisdiction over an appeal is transferred to the Board (Sec. 41.35).
Failure to timely file a petition seeking review of a decision of the
examiner related to a non-appealable issue may constitute a waiver to
have that issue considered.
6. Revise Sec. 41.33 to read as follows:
Sec. 41.33 Amendments and evidence after appeal
(a) Amendment after notice of appeal and prior to appeal
brief. An amendment filed after the date a notice of appeal is
filed and prior to the date an appeal brief is filed may be admitted as
provided in Sec. 1.116 of this title.
(b) Amendment with or after appeal brief. An amendment filed
on or after the date an appeal brief is filed may be admitted:
(1) To cancel claims. To cancel claims provided cancellation of
claims does not affect the scope of any other pending claim in the
application or patent under reexamination, or
(2) To convert dependent claim to independent claim. To rewrite
dependent claims into independent form.
(c) Other amendments. No other amendments filed after the
date an appeal brief is filed will be admitted, except as permitted by
Secs. 41.39(b)(1), 41.50(b)(1), 41.50(d)(1) or 41.50(e) of this subpart.
(d) Evidence after notice of appeal and prior to appeal
brief. Evidence filed after the date a notice of appeal is filed
and prior to the date an appeal brief is filed may be admitted if the
examiner determines that the evidence overcomes some or all rejections
under appeal and appellant shows good cause why the evidence was not
earlier presented.
(e) Other evidence. All other evidence filed after the date
an appeal brief is filed will not be admitted, except as permitted by
Secs. 41.39(b)(1), 41.50(b)(1) or 41.50(d)(1) of this subpart.
7. Revise Sec. 41.35 to read as follows:
Sec. 41.35 Jurisdiction over appeal.
(a) Beginning of jurisdiction. The jurisdiction of the Board
begins when a docket notice is entered by the Board.
(b) End of jurisdiction. The jurisdiction of the Board ends
when the Board orders a remand (see Sec. 41.50(b) or Sec. 41.50(d)(1) of
this subpart) or enters a final decision (see Sec. 41.2 of this subpart)
and judicial review is sought or the time for seeking judicial review
has expired.
(c) Remand ordered by the Director. Prior to entry of a
decision on the appeal by the Board (Sec. 41.50), the Director may sua
sponte order an application or reexamination proceeding on appeal to be
remanded to the examiner.
8. Revise Sec. 41.37 to read as follows:
Sec. 41.37 Appeal brief.
(a) Requirement for appeal brief. An appeal brief shall be
timely filed to perfect an appeal. Upon failure to file an appeal
brief, the proceedings on the appeal are terminated without further
action on the part of the Office.
(b) Fee. The appeal brief shall be accompanied by the fee
required by Sec. 41.20(b)(2) of this subpart.
(c) Time for filing appeal brief. Appellant must file an
appeal brief within two months from the date of the filing of the
notice of appeal (Sec. 41.31(a)).
(d) Extension of time to file appeal brief. The time for
filing an appeal brief is extendable under the provisions of Sec.
1.136(a) of this title for applications and Sec. 1.550(c) of this title
for ex parte reexamination proceedings.
(e) Content of appeal brief. The appeal brief must contain,
under appropriate headings and in the order indicated, the following
items:
(1) Statement of the real party in interest.
(2) Statement of related cases.
(3) Jurisdictional statement.
(4) Table of contents.
(5) Table of authorities.
(6) Status of claims.
(7) Status of amendments.
(8) Rejections to be reviewed.
(9) Statement of facts.
(10) Argument.
(11) An appendix containing a claims section, a claim support
section, a drawing analysis section, a means or step plus function
analysis section, an evidence section and a related cases section.
(f) Statement of real party in interest. The "statement of
the real party in interest" shall identify the name of the real party
in interest. The real party in interest must be identified in such a
manner as to readily permit a member of the Board to determine whether
recusal would be appropriate. Appellant is under a continuing
obligation to update this item during the pendency of the appeal.
(g) Statement of related cases. The "statement of related
cases" shall identify, by application, patent, appeal, interference,
or court docket number, all prior or pending appeals, interferences or
judicial proceedings, known to appellant, appellant's legal
representative or any assignee, and that are related to, directly
affect, or would be directly affected by, or have a bearing on the
Board's decision in the appeal. A copy of any final or significant
interlocutory decision rendered by the Board or a court in any
proceeding identified under this paragraph shall be included in the
related cases section of the appendix. Appellant is under a continuing
obligation to update this item during the pendency of the appeal.
(h) Jurisdictional statement. The "jurisdictional
statement" shall establish the jurisdiction of the Board to consider
the appeal. The jurisdictional statement shall include a statement of
the statute under which the appeal is taken, the date of the decision
from which the appeal is taken, the date the notice of appeal was
filed, and the date the appeal brief is being filed. If a notice of
appeal or an appeal brief is filed after the time specified in this
subpart, appellant must also indicate the date an extension of time was
requested and, if known, the date the request was granted.
(i) Table of contents. A "table of contents" shall list,
along with a reference to the page where each item begins, the items
required to be listed in the appeal brief (see paragraph (e) of this
section), reply brief (see Sec. 41.41(d) of this subpart) or supplemental
reply brief (see Sec. 41.44(d) of this subpart), as appropriate.
(j) Table of authorities. A "table of authorities" shall
list cases (alphabetically arranged), statutes and other authorities
along with a reference to the pages where each authority is cited in
the appeal brief, reply brief, or supplemental reply brief, as
appropriate.
(k) Status of pending claims. The "status of pending
claims" shall include a statement of the status of all pending claims
(e.g., rejected, allowed, cancelled, withdrawn from
consideration, or objected to).
(l) Status of amendments. The "status of amendments"
shall indicate the status of all amendments filed after final rejection
(e.g., whether entered or not entered).
(m) Rejections to be reviewed. The "rejections to be
reviewed" shall set out the rejections to be reviewed, including the
claims subject to each rejection.
(n) Statement of facts. The "statement of facts" shall
set out in an objective and non-argumentative manner the material facts
relevant to the rejections on appeal. A fact shall be supported by a
reference to a specific page number and, where applicable, a specific
line or drawing numerals of the record on appeal. A general reference
to a document as a whole or to large portions of a document does not
comply with the requirements of this paragraph.
(o) Argument. The "argument" shall explain why the
examiner is believed to have erred as to each rejection to be reviewed.
Any explanation must address all points made by the examiner with which
the appellant disagrees and must identify where the argument was made
in the first instance to the examiner or state that the argument has
not previously been made to the examiner. Any finding made or
conclusion reached by the examiner that is not challenged will be
presumed to be correct. Each rejection shall be separately argued under
a separate heading. For arguments traversing a rejection made under 35
U.S.C. 102, 103 or 112, see also paragraphs (o)(4) through (o)(7) of
this section. For arguments traversing other rejections, see also
paragraph (o)(8) of this section.
(1) Claims standing or falling together. When a rejection applies to
two or more claims, as to that rejection, the appellant may elect to
have all claims stand or fall together, or argue
the separate patentability of individual claims. If the appeal brief
fails to make an explicit election, the Board will treat all claims
subject to a rejection as standing or falling together, and select a
single claim to decide the appeal as to that rejection. Any doubt as to
whether an election has been made or whether an election is clear will
be resolved against the appellant. Any claim argued separately shall be
placed under a subheading identifying the claim by number. A statement
that merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.
(2) Arguments considered. Only those arguments which
are presented in the argument section of the appeal brief and that
address claims set out in the claim support section of the appendix
will be considered. Appellant waives all other arguments.
(3) Format of argument. Unless a response is purely
legal in nature, when responding to a point made in the examiner's
rejection, the appeal brief shall specifically identify the point made
by the examiner and indicate where appellant previously responded to
the point or state that appellant has not previously responded to the
point. In identifying any point made by the examiner, the appellant
shall refer to a page and, where appropriate, a line, of the record on
appeal.
(4) Rejection under 35 U.S.C. 112, first paragraph. For each
rejection under 35 U.S.C. 112, first paragraph, the argument
shall also specify the errors in the rejection and how the rejected
claims comply with the first paragraph of 35 U.S.C. 112 including, as
appropriate, how the specification and drawings, if any, describe the
subject matter defined by the rejected claims, enable any person
skilled in the art to which the invention pertains to make and use the
subject matter of the rejected claims, or set forth the best mode
contemplated by the inventor of carrying out the claimed invention.
(5) Rejection under 35 U.S.C. 112, second paragraph. For each
rejection under 35 U.S.C. 112, second paragraph, the argument
shall also specify how the rejected claims particularly point out and
distinctly claim the subject matter which appellant regards as the
invention.
(6) Rejection under 35 U.S.C. 102. For each rejection
under 35 U.S.C. 102 (anticipation), the argument shall also specify why
the rejected claims are patentable by identifying any specific
limitation in the rejected claims which is not described in the prior
art relied upon in support of the rejection.
(7) Rejection under 35 U.S.C. 103. For each rejection
under 35 U.S.C. 103, if appropriate, the argument shall specify the
errors in the rejection and, if appropriate, specify the specific
limitations in the rejected claims that are not described in the prior
art relied upon in support of the rejection, and explain how those
limitations render the claimed subject matter unobvious over the prior
art. A general argument that all limitations are not described in a
single prior art reference does not satisfy the requirements of this
paragraph.
(8) Other rejections. For each rejection other than
those referred to in paragraphs (o)(4) through (o)(7), the argument
shall specify the errors in the rejection, including where appropriate,
the specific limitations in the rejected claims upon which the
appellant relies to establish error.
(p) Claims section. The "claims section" of the appendix
shall consist of an accurate clean copy in numerical order of all
claims pending in the application or reexamination proceeding on
appeal. The status of each claim shall be set out after the claim
number and in parentheses (e.g., 1 (rejected), 2
(withdrawn), 3 (objected to), and 4 (allowed)).
(q) Claim support section. For each claim argued separately
(see paragraph (o)(1) of this section), the "claim support section"
of the appendix shall consist of an annotated copy of the claim
indicating in bold face between braces ({}) the page and line after
each limitation where the limitation is described in the specification
as filed.
(r) Drawing analysis section. For each claim argued
separately (see paragraph (o)(1) of this section) and having at least
one limitation illustrated in a drawing or amino acid or nucleotide
material sequence, the "drawing analysis section" of the appendix
shall consist of an annotated copy of the claim indicating in bold face
between braces ({}) where each limitation is shown in the drawings
or sequence. If there is no drawing or sequence, the drawing analysis
section shall state that there is no drawing or sequence.
(s) Means or step plus function analysis section. For each
claim argued separately (see paragraph (o)(1) of this section) and for
each limitation that appellant regards as a means or step plus function
limitation in the form permitted by the sixth paragraph of 35 U.S.C.
112, the "means or step plus function analysis section" of the
appendix shall consist of an annotated copy of the claim indicating in
bold face between braces ({}) the page and line of the
specification and the drawing figure and element numeral that describes
the structure, material or acts corresponding to each claimed function.
If there is no means or step plus function limitation, the means or
step plus function analysis section shall state that there are not
means or step plus function limitations in the claims to be considered.
(t) Evidence section. The "evidence section" shall
contain only papers which have been entered by the examiner. The
evidence section shall include:
(1) A table of contents.
(2) The Office action setting out the rejection on appeal. If the
Office action incorporates by reference any other Office action, then
the Office action incorporated by reference shall also appear in the
evidence section.
(3) All evidence relied upon by the examiner in support of the
rejection on appeal (including non-patent literature and foreign
application and patent documents), except the specification, any
drawings, U.S. patents or published U.S. applications.
(4) The relevant portion of a paper filed by the appellant before
the examiner which shows that an argument being made on appeal was made
in the first instance to the examiner.
(5) Affidavits and declarations, if any, and attachments to
declarations, relied upon by appellant before the examiner.
(6) Other evidence, if any, relied upon by the appellant before
the examiner.
(u) Related cases section. The "related cases section"
shall consist of copies of orders and opinions required to be cited
pursuant to paragraph (g) of this section.
(v) Appeal brief format requirements. An appeal brief shall
comply with Sec. 1.52 of this title and the following additional
requirements:
(1) Page and line numbering. The pages of the appeal
brief, including all sections of the appendix, shall be consecutively
numbered using Arabic numerals beginning with the first page of the
appeal brief, which shall be numbered page 1. The lines on each page
of the appeal brief and, where practical, the appendix shall be
consecutively numbered beginning with line 1 at the top of each page.
(2) Double spacing. Double spacing shall be used
except in headings, tables of contents, tables of authorities and
signature blocks. Block quotations must be double spaced and indented.
(3) Margins. Margins shall be at least one inch (2.5
centimeters) on all sides. Line numbering may be within the left
margin.
(4) Font. The font shall be readable and clean,
equivalent to 14 point Times New Roman, including the font for block
quotations and footnotes.
(5) Length of appeal brief. An appeal brief may not
exceed 25 pages, excluding any statement of the real party in interest,
statement of related cases, table of contents, table of authorities,
signature block, and appendix. An appeal brief may not incorporate
another paper by reference. A request to exceed the page limit shall be
made by petition under Sec. 41.3 filed at least ten calendar days prior
to the date the appeal brief is due.
(6) Signature block. The signature block must identify
the appellant or appellant's representative, as appropriate, and a
registration number, a correspondence address, a telephone number, a
fax number and an e-mail address.
9. Revise Sec. 41.39 to read as follows:
Sec. 41.39 Examiner's answer.
(a) Answer. If the examiner determines that the appeal
should go forward, then within such time and manner as may be
established by the Director the examiner shall enter an examiner's
answer responding to the appeal brief.
(b) New rejection in examiner's answer. An examiner's answer
may include a new rejection. If an examiner's answer contains a
rejection designated as a new rejection, appellant must, within two
months from the date of the examiner's answer, exercise one of the
following two options or the application will be deemed to be abandoned
or the reexamination proceeding will be deemed to be terminated.
(1) Request to reopen prosecution. Request that prosecution be
reopened before the examiner by filing a reply under Sec.
1.111 of this title with or without amendment or submission of
evidence. Any amendment or evidence must be responsive to the new
rejection. A request that complies with this paragraph will be entered
and the application or patent under reexamination will be reconsidered
by the examiner under the provisions of Sec. 1.112 of this title. A
request under this paragraph will be treated as a request to withdraw
the appeal.
(2) Request to maintain the appeal. Request that the appeal
be maintained by filing a reply brief as set forth in Sec. 41.41
of this subpart. A reply brief may not be accompanied by any amendment
or evidence, except an amendment canceling one or more claims which are
subject to the new rejection. A reply which is accompanied by evidence
or any other amendment will be treated as a request to reopen
prosecution pursuant to paragraph (b)(1) of this section.
(c) Extension of time to file request. The time for filing a
request under Sec. 41.39(b)(1) is extendable under the provisions of Sec.
1.136(a) of this title as to applications and under the provisions of
Sec. 1.550(c) of this title as to reexamination proceedings. A request
for an extension of time for filing a request under paragraph (b)(2) of
this section shall be presented as a petition under Sec. 41.3 of this
part.
10. Revise Sec. 41.41 to read as follows:
Sec. 41.41 Reply brief.
(a) Reply brief authorized. An appellant may file a single
reply brief responding to the points made in the examiner's answer.
(b) Time for filing reply brief. If the appellant elects to
file a reply brief, the reply brief must be filed within two months of
the date of the mailing of the examiner's answer.
(c) Extension of time to file reply brief. A request for an
extension of time to file a reply brief shall be presented as a
petition under Sec. 41.3 of this subpart.
(d) Content of reply brief. A reply brief shall be limited
to responding to points made in the examiner's answer. Except as
otherwise set out in this section, the form and content of a reply
brief are governed by the requirements for an appeal brief as set out
in Sec. 41.37 of this subpart. A reply brief may not exceed fifteen
pages, excluding any table of contents, table of authorities, statement
of timeliness, signature block, and supplemental appendix required by
this section. If the examiner enters and designates a rejection as a
new rejection, the reply brief may not exceed twenty-five pages,
excluding any table of contents, table of authorities, statement of
timeliness, signature block, and supplemental appendix required by this
section. A request to exceed the page limit shall be made by petition
under Sec. 41.3 of this part and filed at least ten calendar days before
the reply brief is due. A reply brief must contain, under appropriate
headings and in the order indicated, the following items:
(1) Table of contents - see Sec. 41.37(i) of this subpart.
(2) Table of authorities - see Sec. 41.37(j) of this subpart.
(3) Statement of timeliness - see paragraph (e) of this section.
(4) Statement of facts - see paragraph (f) of this section.
(5) Argument.
(6) Supplemental appendix.
(e) Statement of timeliness. The "statement of timeliness" shall
include the date that the examiner's answer was entered and the date that
the reply is being filed. If the reply brief is filed after the time
specified in this subpart, appellant must indicate the date an extension
of time was requested and the date the request was granted.
(f) Statement of additional facts. The "statement of
additional facts" shall consist of a statement of the additional
facts that appellant believes are necessary to address the points
raised in the examiner's answer and, as to each fact, must identify the
point raised in the examiner's answer to which the fact relates.
(g) Argument. A reply brief is limited to responding to
points made in the examiner's answer. Arguments generally restating the
case will not be permitted in a reply brief.
(h) Supplemental appendix. If the examiner entered a new
rejection in the examiner's answer and appellant elects to respond to
the new rejection in a reply brief, this item shall include:
(1) A table of contents-see Sec. 41.37(i) of this subpart.
(2) The examiner's answer.
(3) All evidence upon which the examiner relied in support of the
new rejection that does not already appear in the evidence section
accompanying the appeal brief, except the specification, any drawings,
U.S. patents and U.S. published applications.
(i) No amendment or new evidence. No amendment or new
evidence may accompany a reply brief.
11. Revise Sec. 41.43 to read as follows:
Sec. 41.43 Examiner's response to reply brief.
Upon consideration of a reply brief, the examiner may withdraw a
rejection and reopen prosecution or may enter a supplemental examiner's
answer responding to the reply brief.
12. Add Sec. 41.44 to read as follows:
Sec. 41.44 Supplemental reply brief. [new rule number]
(a) Supplemental reply brief authorized. If an examiner
enters a supplemental examiner's answer, an appellant may file a single
supplemental reply brief responding to the supplemental examiner's
answer.
(b) Time for filing supplemental reply brief. Appellant must
file a supplemental reply brief within two months from the date of the
mailing of the examiner's supplemental answer.
(c) Extension of time to file supplemental reply brief. A
request for an extension of time shall be presented as a petition under
Sec. 41.3.
(d) Content of supplemental reply brief. Except as otherwise
set out in this subparagraph, the form and content of a supplemental
reply brief are governed by the requirements for appeal briefs as set
out in Sec. 41.37 of this subpart. A supplemental reply brief may not
exceed ten pages, excluding the table of contents, table of
authorities, and statement of timeliness and signature block. A request
to exceed the page limit shall be made by petition under Sec. 41.3 of
this part and filed at least ten calendar days before the supplemental
reply brief is due. A supplemental reply brief must contain, under
appropriate headings and in the order indicated, the following items:
(1) Table of contents - see Sec. 41.37(i) of this subpart.
(2) Table of authorities - see Sec. 41.37(j) of this subpart.
(3) Statement of timeliness - see paragraph (e) of this section.
(4) Argument - see paragraph (f) of this section.
(e) Statement of timeliness. The "statement of
timeliness" shall establish that the supplemental reply brief was
timely filed by including a statement of the date the supplemental
examiner's answer was entered and the date the supplemental reply brief
is being filed. If the supplemental reply brief is filed after the time
specified in this subpart, appellant must indicate the date an
extension of time was requested and the date the request was granted.
(f) Argument. The "argument" shall be limited to
responding to points made in the supplemental examiner's answer.
Arguments generally restating the case will not be permitted in a
supplemental reply brief.
(g) No amendment or new evidence. No amendment or new
evidence may accompany a supplemental reply brief.
13. Revise Sec. 41.47 to read as follows:
Sec. 41.47 Oral hearing.
(a) Request for oral hearing. If appellant desires an oral
hearing, appellant must file, as a separate paper, a written request
captioned: "REQUEST FOR ORAL HEARING".
(b) Fee. A request for oral hearing shall be accompanied by
the fee required by Sec. 41.20(b)(3) of this subpart.
(c) Time for filing request for oral hearing. Appellant must
file a request for oral hearing within two months from the date of the
examiner's answer or supplemental examiner's answer.
(d) Extension of time to file request for oral hearing. A
request for an extension of time shall be presented as a petition under
Sec. 41.3 of this subpart.
(e) Date for oral hearing. If an oral hearing is properly
requested, the Board shall set a date for the oral hearing.
(f) Confirmation of oral hearing. Within such time as may be
ordered by the Board, appellant shall confirm attendance at the oral
hearing. Failure to timely confirm attendance will be taken as a waiver
of any request for an oral hearing.
(g) List of terms. At the time appellant confirms attendance
at the oral hearing, appellant shall supply a list of technical terms
and other unusual words which can be provided to any individual
transcribing an oral hearing.
(h) Length of argument. Unless otherwise ordered by the
Board, argument on behalf of appellant shall be limited to 20 minutes.
(i) Oral hearing limited to record. At oral hearing only the
record on appeal will be considered. No additional evidence may be
offered to the Board in support of the appeal. Any argument not
presented in a brief cannot be raised at an oral hearing.
(j) Recent legal development. Notwithstanding subparagraph
(i) of this section, an appellant or the examiner may rely on and call
the Board's attention to a recent court or Board opinion which could
have an effect on the manner in which the appeal is decided.
(k) Visual aids. Visual aids may be used at an oral hearing,
but must be limited to copies of documents in the record on appeal. At
the oral hearing, appellant should provide one copy of each visual aid
for each judge and one copy for the record.
(l) Failure to attend oral hearing. Failure of an appellant
to attend an oral hearing will be treated as a waiver of oral hearing.
14. Revise Sec. 41.50 to read as follows:
Sec. 41.50 Decisions and other actions by the Board.
(a) Affirmance and reversal. The Board may affirm or reverse
an examiner's rejection in whole or in part. Affirmance of a rejection
of a claim constitutes a general affirmance of the decision of the
examiner on that claim, except as to any rejection specifically
reversed.
(b) Remand. The Board may remand an application to the
examiner. If in response to the remand, the examiner enters a
supplemental examiner's answer, within two months the appellant shall
exercise one of the following two options to avoid abandonment of the
application or termination of a reexamination proceeding:
(1) Request to reopen prosecution. Request that
prosecution be reopened before the examiner by filing a reply under
Sec. 1.111 of this title with or without amendment or submission of
evidence. Any amendment or evidence must be responsive to the remand
or issues discussed in the supplemental examiner's answer. A request
that complies with this paragraph will be entered and the application
or patent under reexamination will be reconsidered by the examiner
under the provisions of Sec. 1.112 of this title. A request under this
paragraph will be treated as a request to dismiss the appeal.
(2) Request to maintain the appeal. The appellant may
request that the Board re-docket the appeal (see Sec. 41.35(a) of this
subpart) and file a reply brief as set forth in Sec. 41.41 of this
subpart. A reply brief may not be accompanied by any amendment or
evidence. A reply brief which is accompanied by an amendment or
evidence will be treated as a request to reopen prosecution pursuant to
paragraph (b)(1) of this section.
(c) Remand not final action. Whenever a decision of the
Board includes a remand, the decision shall not be considered a final
decision of the Board. When appropriate, upon conclusion of proceedings
on remand before the examiner, the Board may enter an order making its
decision final.
(d) New rejection. Should the Board have a basis not
involved in the appeal for rejecting any pending claim, it may enter a
new rejection. A new rejection shall be considered an interlocutory
order and shall not be considered a final decision. If the Board enters
a new rejection, within two months appellant must exercise one of the
following two options with respect to the new rejection to avoid
dismissal of the appeal as to any claim subject to the new rejection:
(1) Reopen prosecution. Submit an amendment of the
claims subject to a new rejection or new evidence relating to the new
rejection or both, and request that the matter be reconsidered by the
examiner. The application or reexamination proceeding on appeal will be
remanded to the examiner. A new rejection by the Board is binding on
the examiner unless, in the opinion of the examiner, the amendment or
new evidence overcomes the new rejection. In the event the examiner
maintains the new rejection, appellant may again appeal to the Board.
(2) Request for rehearing. Submit a request for rehearing pursuant to
Sec. 41.52 of this subpart relying on the record on appeal.
(e) Recommendation. In its opinion in support of its
decision, the Board may include a recommendation, explicitly designated
as such, of how a claim on appeal may be amended to overcome a specific
rejection. When the Board makes a recommendation, appellant may file an
amendment or take other action consistent with the recommendation. An
amendment or other action, otherwise complying with statutory
patentability requirements, will overcome the specific rejection. An
examiner, however, may enter a new rejection of a claim amended in
conformity with a recommendation, when appropriate.
(f) Request for briefing and information. The Board may
enter an order requiring appellant to brief matters or supply
information or both that the Board believes would assist in deciding
the appeal. Appellant will be given a non-extendable time period within
which to respond to the order. Failure of appellant to timely respond
to the order may result in dismissal of the appeal in whole or in part.
(g) Extension of time to take action. A request for an
extension of time to respond to a request for briefing and information
under paragraph (f) of this section is not authorized. A request for an
extension of time to respond to Board action under paragraphs (b) and
(d) of this section shall be presented as a petition under Sec. 41.3 of
this subpart.
15. Revise Sec. 41.52 to read as follows:
Sec. 41.52 Rehearing.
(a) Request for rehearing authorized. An appellant may file
a single request for rehearing.
(b) Time for filing request for rehearing. Any request for
rehearing must be filed within two months from the date of the decision
entered by the Board.
(c) Extension of time to file request for rehearing. A
request for an extension of time shall be presented as a petition under
Sec. 41.3 of this subpart.
(d) Content of request for rehearing. A request for
rehearing shall state with particularity the points believed to have
been misapprehended or overlooked by the Board. The form of a request
for rehearing is governed by the requirements of Sec. 41.37(v) of this
subpart, except that a request for rehearing may not exceed ten pages,
excluding any table of contents, table of authorities, statement of
timeliness, and signature block. A request to exceed the page limit
shall be made by petition under Sec. 41.3 at least ten calendar days
before the request for rehearing is due. A request for rehearing must
contain, under appropriate headings and in the order indicated, the
following items:
(1) Table of contents - see Sec. 41.37(i) of this subpart.
(2) Table of authorities - see 41.37(j) of this subpart.
(3) Statement of timeliness - see paragraph (e) of this section.
(4) Argument - see paragraph (f) of this section.
(e) Statement of timeliness. The "statement of
timeliness" shall establish that the request for rehearing was timely
filed by including a statement of the date the decision sought to be
reheard was entered and the date the request for rehearing is being
filed. If the request for rehearing is filed after the time specified
in this subpart, appellant must indicate the date an extension of time
was requested and the date the request was granted.
(f) Argument. In filing a request for rehearing, the
argument shall adhere to the following format: "On page x, lines y-z
of the Board's opinion, the Board states that [set out what was
stated]. The point misapprehended or overlooked was made to the Board
in [identify paper, page and line where argument was made to the
Board]. The response is [state response]." As part of each
response, appellant shall refer to the page number and line or drawing
number of the record on appeal. No general restatement of the case is
permitted in a request for rehearing. A new argument cannot be made in
a request for rehearing, except:
(1) New rejection. Appellant may respond to a new
rejection entered pursuant to Sec. 41.50(d)(2) of this subpart.
(2) Recent legal development. Appellant may rely on
and call the Board's attention to a recent court or Board opinion which
is relevant to an issue decided in the appeal.
(g) No amendment or new evidence. No amendment or new
evidence may accompany a request for rehearing.
(h) Decision on rehearing. A decision will be rendered on a
request for rehearing. The decision on rehearing is deemed to
incorporate the underlying decision sought to be reheard except for
those portions of the underlying decision specifically modified on
rehearing. A decision on rehearing is final for purposes of judicial
review, except when otherwise noted in the decision on rehearing.
16. Revise Sec. 41.54 to read as follows:
Sec. 41.54 Action following decision.
After a decision by the Board and subject to appellant's right to seek
judicial review, the application or reexamination proceeding will be
returned to the jurisdiction of the examiner for such further action as
may be appropriate consistent with the decision by the Board.
17. Add Sec. 41.56 to read as follows:
Sec. 41.56 Sanctions.
(a) Imposition of sanctions. A sanction may be imposed
against an appellant for misconduct, including:
(1) Failure to comply with an order entered in the appeal or an
applicable rule.
(2) Advancing or maintaining a misleading or frivolous request
for relief or argument.
(3) Engaging in dilatory tactics.
(b) Nature of sanction. Sanctions may include entry of:
(1) An order declining to enter a docketing notice.
(2) An order holding certain facts to have been established in
the appeal.
(3) An order expunging a paper or precluding an appellant from
filing a paper.
(4) An order precluding an appellant from presenting or
contesting a particular issue.
(5) An order excluding evidence.
(6) An order requiring terminal disclaimer of patent term.
(7) An order holding an application on appeal to be abandoned or
a reexamination proceeding terminated.
(8) An order dismissing an appeal.
(9) An order denying an oral hearing.
(10) An order terminating an oral hearing.
July 30, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and
Director of the United States Patent and
Trademark Office