1211 Remand by Director or Board [R-08.2017]
Both the Director and the Board have the authority to remand a case to the examiner when necessary. See 37 CFR 41.35(c) and (e), and 37 CFR 41.40(a). As specified by 37 CFR 41.50(e), a remand by the Board is not appealable (i.e. not final for purposes of judicial review). In any remand, jurisdiction over the appeal is transferred from the Board back to the examiner. Following the remand, the examiner should take action consistent with the remand order. In the absence of other guidance in the remand order, the examiner should take an action described in MPEP § 1207.
For example, the Director may remand a case for consideration of a new ground of rejection pursuant to 37 CFR 41.35(c) where there has been a change in the law that calls for a new ground of rejection to be entered. Such a remand may require the examiner to prepare a substitute examiner’s answer to enter the new ground of rejection.
1211.01 Remand by Board for Further Consideration of Rejection [R-11.2013]
A substitute examiner’s answer written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. See MPEP § 1207.03.
If a substitute examiner’s answer is written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) (even when there is no new ground of rejection made in the substitute examiner’s answer), the appellant must exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
- (A) Reopen prosecution.Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.131(a), 37 CFR 1.131(c) or 1.132) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. A request that complies with 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.
- (B) Maintain appeal.Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i).
See MPEP § 1207.03 for information on new grounds of rejection.
See MPEP § 1207.05 for information on substitute examiner’s answer and appellant’s response to a substitute examiner’s answer.
See MPEP § 1208 for information on reply briefs.
The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection:
- (A) A remand to consider an Information Disclosure Statement; and
- (B) A remand for the examiner to consider a reply brief.
37 CFR 41.50(a)(2) does not apply when the remand by the Board is not for further consideration of a rejection. The Board will normally indicate in the remand whether 37 CFR 41.50(a)(2)(i) applies. Appellant cannot request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) and is not required to reply to a substitute examiner’s answer that is written in response to a remand that is not for further consideration of a rejection.
The following form paragraph may be used in preparing the substitute examiner’s answer after a remand from the Board:
¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1]for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:
[3]
Examiner Note:
- 1. For use if the notice of appeal was filed on or after January 23, 2012.
- 2. In bracket 1, insert the date of the remand.
- 3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
- 4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.
The supervisory patent examiner must approve any action in which a remanded application is withdrawn from appeal. See MPEP §§ 706.07(e) and 1002.02(d). If the examiner decides to withdraw the final rejection and reopen prosecution to enter a new ground of rejection, approval from the supervisory patent examiner is required. See MPEP § 1207.04.
1211.02 Remand To Consider Amendment [R-11.2013]
There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal. In re Sweet, 136 F.2d 722, 58 USPQ 327 (CCPA 1943). However, a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form may be remanded for consideration by the examiner. See MPEP § 1206.
If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.
1211.03 Remand To Consider Affidavits or Declarations [R-11.2013]
Affidavits or declarations filed with the filing of a notice of appeal but before jurisdiction passes to the Board (see MPEP § 1206) will be considered for entry only if the appellant makes the necessary showing under 37 CFR 1.116(e) as to why they are necessary and were not earlier presented. Authority from the Board is not necessary to consider such affidavits or declarations. Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP §§ 715.09, 716, and 716.01. If such evidence has not been treated by the examiner, the Board or the Director may remand the proceeding to permit the examiner to consider such evidence.
In the case of affidavits or declarations filed after the filing of a notice of appeal, but before a jurisdiction passes to the Board under 37 CFR 41.35, the examiner is without authority to consider the same unless the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented have been made. See MPEP § 1206.
It is not the custom of the Board to remand affidavits or declarations offered in connection with a request for rehearing of its decision where no rejection has been made under 37 CFR 41.50(b). Affidavits or declarations submitted for this purpose, not remanded to the examiner, are considered only as arguments. In re Martin, 154 F.2d 126, 69 USPQ 75 (CCPA 1946).
For remand to the examiner to consider appellant’s response relating to a 37 CFR 41.50(b) rejection, see MPEP § 1214.01.
1211.04 Remand by Board for Further Search [R-08.2012]
It should be extremely rare for the Board to remand a case to the examiner for further search. A remand to the examiner extends the total pendency of an application and may necessitate an extension of the patent term under 35 U.S.C. 154(b). See MPEP § 2710. When such a remand is necessary, the Board should conduct a search (on-line or otherwise) of at least one subclass and cite art from that subclass to demonstrate the basis on which it concludes that a search of this area would be material.The art cited need not be art upon which a rejection can be made.
