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1214    Procedure Following Decision by Board

MPEP SECTION SUMMARY After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW. The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3, or the two month period for filing a request for rehearing under 37 CFR 41.52, begins to run from the “MAIL DATE” if the decision is provided by paper delivery, or the “NOTIFICATION DATE” if the decision is provided by electronic delivery.

 

MPEP SECTION SUMMARY This section covers the procedure following a new ground of rejection by the Board. 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 reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence; or requesting rehearing before the Board. 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.” Further details on the submission of an amendment or new evidence are detailed in this section.

  Section Frequency Chart

If appellant believes that a Board decision that appears to be an affirmance is actually a decision including a new ground of rejection, review of any undesignated new ground of rejection is by way of 37 CFR 41.50(c) and 41.52 and not through the procedure in this section.

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

• the time for response expires and the Board enters an order of dismissal, or
• appellant reopens prosecution in response to the new grounds of rejection.

The amendment and/or new evidence or the request for rehearing must be filed within 2 months from the date of the Board’s decision.

• 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.

If an appellant files an appropriate amendment or new evidence as to less than all of the claims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing 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

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.

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.

II.   REQUEST FOR REHEARING

Instead of filing an amendment and/or new evidence, an appellant may elect to 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. 

If the Board’s decision also includes an affirmance of the examiner’s rejection, a request for rehearing of the affirmance should be filed in a separate paper to facilitate consideration.

MPEP SECTION SUMMARY This section covers rehearings. Any request for rehearing must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision.

 

 

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:

• new argument(s) based upon a recent relevant decision of either the Board or a Federal Court,
• new argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b), and
• new argument(s) that the Board’s decision contains an undesignated new ground of rejection.

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.

• An applicant may file an RCE during the 63 day period available to appeal after decision on the rehearing request.

MPEP SECTION SUMMARY A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner.

MPEP SECTION SUMMARY An appeal is presumed to be taken from the rejection of all claims. 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.

MPEP SECTION SUMMARY This section covers instances where the examiner is sustained in whole or in part. It covers instances where no claims stand allowed, when claims do stand allowed, and when claims require an action.

 

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 63 days plus any additional time requested and granted under 37 CFR 90.3(c).

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.

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 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.

When the Board affirms a rejection of an independent claim, and there is a dependent claim that was objected to as being allowable prior to the appeal, the application is held abandoned, as there is no remaining time period for redrafting the dependent claim in independent form.

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.
• (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 are available. If no timely reply is received, the application is abandoned since no claims stand allowed

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 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:

• 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
• Set a 2-month time limit in which appellant may rewrite dependent claim 2 in independent form.
  • Extensions of time under 37 CFR 1.136(a) are available.
  • If the reply and any necessary extension of time fee are not received before the expiration of the maximum six-month time period set by statute, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.

 

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.
  
  

MPEP SECTION SUMMARY 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.

 

» 1215 Withdrawal or Dismissal of Appeal