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1215    Withdrawal or Dismissal of Appeal

MPEP SECTION SUMMARY This section covers the withdrawal or dismissal of appeal. Topics discussed include partial withdrawals, dismissal of appeal, and when claims stand allowed.

  Section Frequency Chart

MPEP SECTION SUMMARY This section covers the withdrawal of an appeal. Essentially, 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the final rejection has expired, the application is to be considered abandoned as of the date on which the appeal was withdrawn unless there are allowed claims in the case.

  Section Frequency Chart

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, the application is returned to the examiner and 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) , 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.

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

• 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 
• 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

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.

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.
  
  
  

MPEP SECTION SUMMARY 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.

MPEP SECTION SUMMARY This section covers a partial withdrawal. Essentially, if an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application.

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.

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.
  
  

MPEP SECTION SUMMARY This section covers the dismissal of an appeal. For instance, if no brief is filed, the appeal will be dismissed.

  Section Frequency Chart

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.

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

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 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive 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

If the appeal forwarding fee is not paid within the proper period, 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, 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.

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.

• (1) the examiner may handle the formal matters by examiner’s amendment or
• (2) the examiner may 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

37 CFR 41.39(a)(2) permits the entry of new grounds of rejection in an examiner’s answer.

 

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