1214.01 Procedure Following New Ground of Rejection by Board [R-01.2024]

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

• (A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1));
• (B) requesting rehearing before the Board (37 CFR 41.50(b)(2)); or
• (C) filing a request for continued examination in which case the decision by the Board is the law of the case. See MPEP § 706.07(h), subsection XI.

The procedures of 37 CFR 41.50(b)(1) and (b)(2)only apply where the Board designates a rejection as a new ground of rejection under 37 CFR 41.50(b). If an appellant believes that a Board decision that appears to be an affirmance is actually a new ground of rejection, review of any undesignated new ground of rejection is by way of 37 CFR 41.50(c) and 37 CFR 41.52 and not through the procedure described here.

Where a decision designates a new ground of rejection under 37 CFR 41.50(b), the Board retains jurisdiction over the appeal until:

• (a) the time for response expires and the Board enters an order of dismissal (37 CFR 41.35(b)(5));
• (b) appellant reopens prosecution in response to the new grounds of rejection (37 CFR 41.35(b)(6)); or
• (c) the appellant files a request for continued examination (RCE).

The amendment and/or new evidence under 37 CFR 41.50(b)(1), or the request for rehearing under 37 CFR 41.50(b)(2), must be filed within 2 months from the date of the Board’s decision. In accordance with 37 CFR 41.50(f), this 2-month time period may not be extended by the filing of a petition and fee under 37 CFR 1.136(a), but only under the provisions of 37 CFR 1.136(b), or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding. An RCE (accompanied by the appropriate fee and a submission) may be filed after a decision by the Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action in federal district court. The time period for filing a notice of appeal to the Federal Circuit or for commencing a civil action ends sixty-three (63) days after the date of the final Board decision. See 37 CFR 90.3 and MPEP § 1216. Thus, an RCE filed within this sixty-three day time period and before the filing of a notice of appeal to the Federal Circuit or the commencement of a civil action would be timely filed.

If an appellant files an appropriate amendment or new evidence (see paragraph I below) as to less than all of the claims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing (see paragraph II below) as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or new evidence as to those claims will be treated as a request for rehearing as to those claims.

I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE

37 CFR 41.50(b)(1) provides that the application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” An amendment is “appropriate” under the rule if it amends one or more of the claims rejected, or substitutes new claims to avoid the art or reasons adduced by the Board. Ex parte Burrowes, 110 O.G. 599, 1904 C.D. 155 (Comm’r Pat. 1904). Such amended or new claims must be directed to the same subject matter as the appealed claims. Ex parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm’r Pat. 1923). An amendment which adds new claims without either amending the rejected claims, or substituting new claims for the rejected claims, is not appropriate. The new claims will not be entered, and the examiner should consult a supervisor to have the entry in the file changed to a request for rehearing under 37 CFR 41.50(b)(2), if it contains any argument concerning the Board’s rejection. The “new evidence” under the rule may be a showing under 37 CFR 1.130, 1.131 or 1.132, as may be appropriate.

If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 CFR 41.50(b)(2).

The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.

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

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

When such a rejection has been made by the examiner an applicant may mistakenly believe that they are entitled to review by the Board of the rejection by virtue of the previous appeal, but under the provisions of 37 CFR 41.50(b)(1), after such a rejection, an applicant who desires further review of the matter must file a new appeal to the Board. Such an appeal from the subsequent rejection by the examiner will be an entirely new appeal involving a different ground and will require a new notice of appeal, appeal brief, and the payment of the appropriate fees.

II. REQUEST FOR REHEARING

Instead of filing an amendment and/or new evidence under 37 CFR 41.50(b)(1), an appellant may elect to proceed under 37 CFR 41.50(b)(2) and file a request for rehearing of the Board’s new rejection. The rule requires that the request for rehearing “must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought.” By proceeding in this manner, the appellant waives their right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). This waiver extends to the appellant’s right to amend claims under 37 CFR 41.50(b)(1); appellant may still invoke the limited right to rewrite dependent claims not subject to the new grounds of rejection into independent form. See MPEP § 1214.06. A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1).

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

1214.02 [Reserved] [R-]

1214.03 Rehearing [R-10.2019]

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

37 CFR 41.52 provides that any request for rehearing must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision. Experience has shown that many requests for rehearing are nothing more than reargument of appellant’s position on appeal. In response, the rule was revised to limit requests to the points of law or fact which appellant feels were overlooked or misapprehended by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except appellant may present (A) new argument(s) based upon a recent relevant decision of either the Board or a Federal Court, (B) new argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b), and (C) new argument(s) that the Board’s decision contains an undesignated new ground of rejection. If appellant relies upon a recent relevant decision of either the Board or a Federal Court, a remand by the Board to the examiner to respond to that new argument may be appropriate.

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

If a timely request for rehearing of the Board’s decision is filed, the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action expires 63 days after a decision on a request for rehearing or reconsideration (37 CFR 90.3(b)(1)). An applicant may file a RCE during the 63 day period available to appeal after decision on the rehearing request. See MPEP § 706.07(h), subsection XI.

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

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

Should an Administrative Patent Judge (APJ) retire or otherwise become unavailable to reconsider a decision, normally another APJ will be designated as a substitute for the unavailable APJ.

1214.04 Examiner Reversed in Whole [R-01.2024]

A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner. If the reversal does not place an application in condition for immediate allowance (e.g., the Board has entered a new ground of rejection under 37 CFR 41.50(b) or the application contains withdrawn claims to a non-elected invention), the examiner should refer to the situations outlined in MPEP § 1214.06 for appropriate guidance.

Though the examiner is expected to bring the prior art search up-to-date prior to passing an application to issue, the examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references. If the application or ex parte reexamination proceeding has been transferred or assigned to a new examiner and the new examiner considers the prior art search to be incomplete (i.e. a new claim interpretation is suggested in the decision), the examiner should raise the issue with their SPE.

If an examiner is proposing a new rejection for any reason (e.g. a change in statute, guiding case law, or agency guidance or the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability) of any of the appealed claims as to which the examiner was reversed, except under the provisions of 37 CFR 1.114 or 41.50, the examiner must submit the matter to the Technology Center (TC) Director or Central Reexamination Unit (CRU) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC or CRU Director’s approval is placed on the action reopening prosecution.

The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the TC or the reexamination proceeding or reissue application to the CRU.

All requests by the examiner to the Board for rehearing of a decision must be approved by the TC or CRU Director and must also be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for approval before mailing.

The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the answers before the Board and evidence not previously relied upon in the answers are not permitted in the request for rehearing except that the examiner may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.

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

If the request for rehearing is approved by the Office of the Deputy Commissioner for Patent Examination Policy, the TC or CRU will enter the request for rehearing in the electronic file and a copy will be mailed or given to the appellant.

1214.05 Cancellation of Claims Not Appealed [R-11.2013]

Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims (i.e., claims subject to a ground of rejection that the appellant did not present for review in the brief), and the Board reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.

1214.06 Examiner Sustained in Whole or in Part; Claims Require Action [R-07.2022]

The practice under the situations identified in subsections I-III below is similar to the practice after a decision of the court outlined in MPEP § 1216.01. Examiners must be very careful that applications and ex parte reexamination proceedings that leave the jurisdiction of the Board are not overlooked because every case is up for action by the examiner in the event no court review has been sought. See MPEP §§ 1216.01 and 1216.02 for procedure where court review is sought.

As provided by 37 CFR 90.3, the time for seeking review of a decision of the Board by the Court of Appeals for the Federal Circuit or the U.S. District Court for the Eastern District of Virginia is the same for both tribunals, that is, 63 days plus any additional time requested and granted under 37 CFR 90.3(c). In the event a request for rehearing is timely filed before the Board, or as extended by the Director. See MPEP § 1216. When the time for seeking court review has passed without such review being sought, the examiner must take up the application or ex parte reexamination for consideration. The situations which can arise when an examiner is sustained in whole or in part will involve one or more of the following circumstances:

I. NO CLAIMS STAND ALLOWED

The proceedings in an application or ex parte reexamination proceeding are terminated as of the date of the expiration of the time for filing court action. The application is no longer considered as pending. In an application, a Notice of Abandonment should be prepared and mailed once the period for seeking review under 37 CFR 90.3 has expired. In an ex parte reexamination proceeding, a notice of intent to issue a reexamination certificate should be issued under 37 CFR 1.570 once the period for seeking review under 37 CFR 90.3 has expired.

If the application includes a non-statutory double patenting rejection which was affirmed by the Board or a provisional rejection that was not addressed by the Board, the applicant may file a proper terminal disclaimer prior to the expiration of the period for seeking review under 37 CFR 90.3 to overcome the rejection. If the terminal disclaimer is insufficient to overcome the rejection the applicant will not be granted additional time to correct the deficiency. See MPEP §§ 804.02 and 1490.

Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected claims will be treated as if they were rejected, unless an amendment pursuant to 37 CFR 41.33(b)(2) rewriting such claims in independent form is filed within the period for seeking review under 37 CFR 90.3. See MPEP § 1206. The following examples illustrate the appropriate approach to be taken by the examiner in various situations in applications:

• (A) If claims 1-2 are pending, the Board affirms a rejection of independent claim 1, dependent claim 2 was objected to prior to forwarding of the appeal as being allowable except for its dependency from claim 1 and claim 2 remains in dependent form, the examiner should hold the application abandoned as there is no remaining time period to redraft claim 2 in independent form.
• (B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
  • (1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
  • (2) Set a 2-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) are available. If no timely reply is received, the application is abandoned because no claims stand allowed.

The following form paragraph may be used where appropriate:

For procedures in reexamination proceedings, see MPEP § 2278 , subsection I.

II. CLAIMS STAND ALLOWED

The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment.

If the Board affirms a rejection of claim 1, claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1 and independent claim 3 is allowed, the examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:

• (A) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or
• (B) Set a 2-month time limit in which appellant is required to rewrite dependent claim 2 in independent form, to avoid cancellation of claim 2. Extensions of time under 37 CFR 1.136(a) are available. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.

  The following form paragraphs may be used where appropriate:

If uncorrected matters of form which cannot be handled without written correspondence remain in the application, the examiner should take appropriate action but prosecution is otherwise closed. A letter such as that set forth in form paragraph 12.297 is suggested:

For procedures in reexamination proceedings, see MPEP § 2278 , subsection II.

III. CLAIMS REQUIRE ACTION

A decision of the Board may include a reversal of a rejection that brings certain claims up for action on the merits. These decisions include the reversal of the rejection of generic claims in an application containing claims to nonelected species not previously acted upon. The application may also contain a provisional rejection which was not reached in the Board's decision. The examiner will take up the application for appropriate action on the matters thus brought up. However, the application is not considered open to further prosecution except as to such matters.

A.Application contains non-elected claims

If, upon review of the decision of the Board, the elected claims are in condition for allowance and the application contains claims directed to a non-elected invention, whether the election was made with or without traverse, the non-elected invention should be considered for rejoinder. See MPEP § 821.04.

If the decision of the Board includes a reversal of all rejections of a generic claim, pending claims drawn to a non-elected species must be acted upon. The only exception is when, the examiner reopens prosecution and enters a new ground of rejection of the generic claim and determines that the election of species continues to be appropriate; in such situations the generic claim and any claims drawn to the elected species are examined on the merits and claims drawn to non-elected species remain withdrawn from consideration. See MPEP § 809.

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

If a decision by the Board does not include an opinion on a provisional nonstatutory double patenting rejection, and includes a reversal of all other grounds as to a claim rejected based on provisional nonstatutory double patenting and the applicant has not filed a proper terminal disclaimer, the examiner must act upon the provisional nonstatutory double patenting rejection. The examiner must first determine if any reference application used in the provisional nonstatutory double patenting rejection has issued as a patent. If the reference application has issued, the provisional rejection should be re-issued as a non-provisional rejection and a terminal disclaimer should be required, for example, by using form paragraphs 8.33-8.39 as appropriate. See MPEP § 804, subsection II.B. If the reference application has been abandoned or has not matured to a patent and the provisional double patenting rejection is the only remaining rejection in the application the examiner should withdraw the provisional rejection.

IV. 37 CFR 41.50(b) REJECTION

Where the Board makes a new rejection under 37 CFR 41.50(b) and no action is taken with reference thereto by appellant within 2 months, the examiner should proceed in the manner indicated in paragraphs I-III of this section as appropriate. See MPEP § 1214.01.

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

• (A) If the appellant elects to proceed before the examiner with regard to the new rejection (see MPEP § 1214.01, subsection I., the Board’s affirmance will be treated as nonfinal, and no request for rehearing of the affirmance need be filed at that time. In order to proceed before the examiner, applicant must amend the newly rejected claims or submit new evidence, as defined in 37 CFR 41.33, or both. If applicant presents arguments against the new grounds of rejection without amendment or evidence, jurisdiction over the appeal should remain with the Board. The Board, having made the new ground of rejection and thus having the most complete understanding of the logic and analysis that led to the new ground, is in the best position to evaluate appellant’s rebuttal arguments in a request for rehearing. It is only in the instance where appellant chooses to amend the claims or submit new evidence that prosecution must be reopened and the case returned to the examiner to consider the amendment and/or new evidence in the first instance. Should an examiner discover that a reply containing only arguments against a new ground of rejection has been returned to the examining corps, the appeal should be returned to the Board for appropriate handling.

  Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If an application becomes allowed, it should not be returned to the Board. Likewise, if an application is abandoned for any reason, it should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant (or patent owner in an ex parte reexamination proceeding) can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If an application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. Similarly, the file of any ex parte reexamination proceeding including decisions including rejections affirmed by the Board but made non-final for purposes of judicial review must be returned to the Board so that the affirmance can be made final by the Board. The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP §§ 1214.03 and 1216.

• (B) If the appellant elects to request rehearing of the new rejection (see MPEP § 1214.01, paragraph II), the request for rehearing of the new rejection and of the affirmance must be filed within 2 months from the date of the Board’s decision.

1214.07 Reopening of Prosecution [R-11.2013]

Sometimes an amendment is filed after the Board’s decision which presents a new or amended claim or claims. In view of the fact that prosecution is closed, the appellant is not entitled to have such amendment entered as a matter of right. However, if the amendment is submitted with a request for continued examination (RCE) under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e), prosecution of the application will be reopened and the amendment will be entered. See MPEP § 706.07(h), subsection XI. Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 or to design applications. See 37 CFR 1.114(d) and MPEP § 706.07(h), subsection I. If the amendment obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner should recommend that the amendment be entered, and with the concurrence of the supervisory patent examiner, the amendment will be entered. Note MPEP § 1002.02(d).

Where the amendment cannot be entered, the examiner should write to the appellant indicating that the amendment cannot be entered and stating the reason why. The refusal may not be arbitrary or capricious.

Form paragraph 12.298 should be used:

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

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

The Director of the USPTO also entertains petitions under 37 CFR 1.198 to reopen certain cases in which an appellant has sought review under 35 U.S.C. 141 or 145. This procedure is restricted to cases which have been decided by the Board and which are amenable to settlement without the need for going forward with the court proceeding. Such petitions will ordinarily be granted only in the following categories of cases:

• (A) When the decision of the Board asserts that the rejection of the claims is proper because the claims do not include a disclosed limitation or because they suffer from some other curable defect, and the decision reasonably is suggestive that claims including the limitation or devoid of the defect will be allowable;
• (B) When the decision of the Board asserts that the rejection of the claims is proper because the record does not include evidence of a specified character, and is reasonably suggestive that if such evidence were presented, the appealed claims would be allowable, and it is demonstrated that such evidence presently exists and can be offered; or
• (C) When the decision of the Board is based on a practice, rule, law, or judicial precedent which, since the Board’s decision, has been rescinded, repealed, or overruled.

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

In the case of an appeal under 35 U.S.C. 141, if the petition is granted, steps will be taken to request the court to remand the case to the U. S. Patent and Trademark Office. If so remanded, the proposed amendments, evidence, and arguments will be entered of record in the application file for consideration, and further action will be taken by the Board in the first instance or by the examiner as may be appropriate. In the case of civil action under 35 U.S.C. 145, steps will be taken for obtaining dismissal of the action without prejudice to consideration of the proposals.