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1211    Remand by Director or Board

MPEP SECTION SUMMARY This section covers a remand to the Director or the Board. There is no obligation resting on the Board to consider new or amended claims that are submitted while the case is on appeal. However, if a proposed amendment results in the abandonment of the appeal (such as one canceling the claims on appeal), the amendment must be entered.

The Board has the authority to remand a case to the examiner when necessary, which may occur when the Board needs the examiner to:

• clarify references
• select the best ground
• search or consider an amendment
• to prepare a substitute examiner’s answer to a reply brief

Where an affidavit or declaration is filed after the filing of a notice of appeal but before a decision by the Board, the examiner is without authority to consider the affidavit or declaration unless:

• the examiner determines that the affidavit or declaration overcomes all rejections under appeal, and
  
• a showing of good and sufficient reasons why the affidavit or declaration is necessary and was not earlier presented has been made

Both the Director and the Board have the authority to remand a case to the examiner when necessary

If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.

MPEP SECTION SUMMARY 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. This section further covers a remand by the Board for further consideration of rejection.

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:

• 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 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.
• Maintain appeal. Request that the appeal be maintained by filing a reply brief. 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.

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 remand to consider an Information Disclosure Statement; and
• A remand for the examiner to consider a reply brief.
  
  

MPEP SECTION SUMMARY There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal. 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. If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.

MPEP SECTION SUMMARY Affidavits or declarations filed with the filing of a notice of appeal but before jurisdiction passes to the Board 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. In the case of affidavits or declarations filed after the filing of a notice of appeal, but before a jurisdiction passes to the Board, 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.

 

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