You are here:  Ed9 07.2015 Guidebook  » Chapter 1200

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.

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.

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. In an application, a Notice of Abandonment should be prepared and mailed.
• In an ex parte reexamination proceeding, a reexamination certificate should be issued.

Claims indicated as allowable prior to appeal 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:

• If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
• 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 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. 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.

III.   CLAIMS REQUIRE ACTION

If the decision of the Board is an affirmance in part and includes a reversal of a rejection that brings certain claims up for action on the merits, such as a decision reversing the rejection of generic claims in an application or ex parte reexamination proceeding containing claims to nonelected species not previously acted upon, the examiner will take up the application or reexamination proceeding for appropriate action on the matters thus brought up.

• However, the application or reexamination proceeding 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