1215.01 Withdrawal of Appeal [R-10.2019]

Where, after an appeal has been filed and before decision by the Board, an applicant withdraws the appeal after the period for reply to the final rejection has expired, the application is to be considered abandoned as of the date on which the appeal was withdrawn unless there are allowed claims in the case.

Where a letter abandoning the application is filed in accordance with 37 CFR 1.138, the effective date of abandonment is the date of recognition of the letter by an appropriate official of the Office or a different date, if so specified in the letter itself. See MPEP § 711.01.

If a brief has been filed within the time permitted by 37 CFR 41.37 (or any extension thereof) and an answer mailed and appellant withdraws the appeal prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a), the application is returned to the examiner. If appellant withdraws the appeal after jurisdiction has been transferred to the Board, dismissal of the appeal will be handled by the Board.

Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action) and the RCE fee set forth under 37 CFR 1.17(e). Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995, design applications, or reexamination proceedings. See 37 CFR 1.114(d) and MPEP § 706.07(h), subsection X., for more details. An appeal brief or reply brief (or related papers) is not a submission under 37 CFR 1.114, unless the transmittal letter of the RCE contains a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. See MPEP § 706.07(h), subsection II. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission. Therefore, when an RCE is filed without the appropriate fee or a submission in an application that has no allowed claims, the application will be considered abandoned. To avoid abandonment, the RCE should be filed in compliance with 37 CFR 1.114. See MPEP § 706.07(h), subsections I-II.

Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations:

• (A) In response to a new ground of rejection made in an examiner’s answer, appellant may file a reply in compliance with 37 CFR 1.111 that addresses the new ground of rejection within two months from the mailing of the examiner’s answer (see MPEP § 1207.03).
• (B) In response to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), appellant may file a reply in compliance with 37 CFR 1.111 that addresses the rejection in the substitute answer within two months from the mailing of the substitute answer (see MPEP § 1207.05).

To avoid the rendering of decisions by the Board in applications which have already been refiled as continuations, applicants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Applicants also should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision.

Upon the withdrawal of an appeal, an application having no allowed claims is abandoned, and a notice of abandonment should be mailed. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:

• (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
• (B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
• (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned as there is no remaining time period to redraft claim 2 in independent form.
• (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; 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.

In an ex parte reexamination proceeding, an ex parte reexamination certificate should be issued under 37 CFR 1.570.

1215.02 Claims Standing Allowed [R-08.2012]

If an application contains allowed claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an abandonment of the application, but is considered a withdrawal of the appeal as to those claims and authority to the examiner to cancel the same. An amendment canceling the appealed claims is equivalent to a withdrawal of the appeal.

1215.03 Partial Withdrawal [R-11.2013]

If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and 1214.05.

If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner’s answer, the appeal will be sua sponte dismissed by the Board as to the claims subject to the new ground of rejection.

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

1215.04 Dismissal of Appeal [R-10.2019]

I. DISMISSAL BECAUSE NO BRIEF WAS FILED

If no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired.

Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.

The following examples illustrate the appropriate approach to be taken by the examiner in various situations:

• (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
• (B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
• (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
• (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.

If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.

II. DISMISSAL BECAUSE BRIEF WAS HELD NON-COMPLIANT

An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) - (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.

III. DISMISSAL BECAUSE APPEAL FORWARDING FEE WAS NOT PAID

As provided in 37 CFR 41.45(b) and MPEP § 1208.01, if the appeal forwarding fee set forth in 37 CFR 41.20(b)(4) is not paid within the period set forth in 37 CFR 41.45(a), the appeal will stand dismissed.

Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.

The following examples illustrate the appropriate approach to be taken by the examiner in various situations:

• (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
• (B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
• (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
• (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.

If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.

IV. DISMISSAL AS TO CLAIMS SUBJECTED TO NEW GROUNDS OF REJECTION IN EXAMINER'S ANSWER

As provided in MPEP § 1207.03, with TC Director approval, 37 CFR 41.39(a)(2) permits the entry of new grounds of rejection in an examiner’s answer. If the appellant does not timely respond to the examiner’s answer, form paragraph 12.279.02 may be used to dismiss the appeal as to the claims subject to the new grounds of rejection.

V. DISMISSAL FOLLOWING REMAND FROM THE BOARD

An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1) . Pursuant to 37 CFR 41.50(a)(1) , the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options .