1215 Withdrawal or Dismissal of Appeal
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Section Frequency Chart
1215.01 Withdrawal of Appeal
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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.
1215.02 Claims Standing Allowed
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1215.03 Partial Withdrawal
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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.
1215.04 Dismissal of Appeal
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Section Frequency Chart
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.
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. The examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.
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). 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 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.
