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 2682    Action Following Decision  

MPEP SECTION SUMMARY This section covers the action following the decision by the Board. When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown. After an appeal to the Board has been decided, a copy of the decision is mailed to all parties to the reexamination proceeding, and the original of the decision is placed in the file. This section covers when the Board affirms, reverses a rejection, or affirms-in-part, a new ground of rejection, when the Board reverses the examiner's determination not to make a proposed rejection, and remand by the Board.

The Board, in its decision, may affirm or reverse the decision of the examiner, in whole or in part, on the grounds of rejection specified by the examiner and/or on the proposed grounds presented by a third party requester but not adopted by the examiner.

• A rejection of claims by the examiner may also be affirmed on the basis of the argument presented by the third party requester, and a finding of patentability may also be affirmed on the basis of the arguments presented by the patent owner.
• Further handling of the reexamination proceeding will depend upon the nature of the Board’s decision.

I. NO NEW GROUNDS: THE BOARD AFFIRMS, REVERSES A REJECTION, OR AFFIRMS-IN-PART (AND REVERSES ONLY AS TO REJECTION(S))

Where the Board decision:

• (A) affirms the examiner in whole,
• (B) reverses the examiner in whole where only rejections were appealed, or
• (C) affirms in part and reverses in part, where the only examiner decision overturned is that of rejecting claims, there are no new grounds of rejection in the decision.

The Board retains jurisdiction of the proceeding until the expiration of both the period for requesting rehearing of the decision by the Board, and the period for seeking court review of the decision of the Board.

The time period for seeking review of a decision of the Board by the U.S. Court of Appeals for the Federal Circuit is generally two months from the date of the decision of the Board plus any extension obtained under 37 CFR 1.304.

The two-month time period set forth in 37 CFR 1.304 for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit starts on:

• (1) the mailing date of the final Board decision if the decision is mailed to the appellant, or
• (2) the notification date of the final Board decision if electronic mail notification is sent to the appellant under the e-Office Action program.

The time period for requesting rehearing is one month from the date of the decision of the Board and the one month period may not be extended.

A.   No Action Taken by Parties to the Appeal

At least two weeks after the time for action by any party (to the appeal) has expired, the CRU support staff will forward the case (via the CRU Director) to the examiner.

• The delay is to permit any information as to requesting rehearing, or the filing of an appeal, to reach the CRU.
• Upon receipt of the reexamination, the examiner will take up the reexamination proceeding for action so that a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) can be issued, to terminate the prosecution of the reexamination proceeding.

B.   A Request for Rehearing of the Decision

Any party to the appeal not satisfied with the Board decision may file a (i.e., single) request for rehearing of the decision.

The request must be filed within one month from the date of:

• the original decision;
• the expiration of the time for the patent owner to take action under 37 CFR 41.77(b)(2); or
  
• a new decision specifically designated as “new”.

The one month period may not be extended.

If a party does file a request for rehearing of the decision, any opposing party appellant or opposing party respondent may, within one month from the date of service of the request for rehearing, file responsive comments on the request for rehearing.

• This one month period may not be extended.

Where at least one request for rehearing of the decision is granted, the Board’s decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and the decision is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.

If the Board opinion reflecting its decision on rehearing indicates that the decision is a new decision, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision.


II.   NEW GROUND OF REJECTION BY BOARD

The Board may, in its decision on appeal, make a new rejection of one or more appealed claims on grounds not raised in the appeal, in which case the patent owner has the option of:

• requesting rehearing; or
• submitting an appropriate amendment of the rejected claims, and/or new evidence (e.g., a showing of facts) relating to the claim.

The parties do not have the option of an immediate appeal to the U.S. Court of Appeals for the Federal Circuit because the decision under 37 CFR 41.77(b) is not a final decision.

The patent owner must either request rehearing or reopening of prosecution or the appeal may be terminated.

When jurisdiction remains with the Board and a paragraph to discuss procedures when there is a new ground of rejection in addition to rejections or findings of patentability that are affirmed.

A. Proceeding under 37 CFR 41.77(b)(2): Requesting Rehearing of the Decision Which Includes a New Ground of Rejection

A patent owner’s request for rehearing by the Board must be filed within a nonextendable one month period.

• By proceeding in this manner, the patent owner waives his or her right to further prosecution before the examiner.

If the patent owner does file a request for rehearing of the decision, any third party requester that is a party to the appeal may, within a non-extendable one month period from the date of service of the request for rehearing, file responsive comments on the request.

B.   Proceeding under 37 CFR 41.77(b)(1): Requesting Reopening of Prosecution and Submission of Amendment or Showing of Facts After Decision Which Includes a New Ground of Rejection

1.Patent Owner’s Submission under 37 CFR 41.77(b)(1)

If the patent owner elects to proceed before the examiner, the patent owner must take action within the one month period for response which will be set in the Board’s decision.

• Extensions of time under 37 CFR 1.956 are available to extend the period.
• The extension(s) may not, however exceed six months from the Board’s decision.

Amended or new claims must be directed to the same subject matter as the appealed claims.

• The patent owner may also submit evidence or a showing of facts under 37 CFR 1.131(a) or 1.132, as may be appropriate.

C. No submission under 37 CFR 41.77(b)(1) or (2)

If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution, the Board may terminate the appeal proceeding as to the claim(s) rejected pursuant to 37 CFR 41.77(b) and designate the decision as to any remaining claims final for purposes of judicial review.

• Final action by the Board will give rise to the alternatives available to a party to the appeal following a final decision by the Board, with respect to any remaining claims.
  

III.   REMAND BY BOARD

The Board, in its decision, may remand the reexamination proceeding to the examiner for further consideration.

• A Board decision which includes a remand in accordance with 37 CFR 41.77(a) will not be considered a “final decision” in the case.

 

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