Questions and Answers for BPAI Final Rule and Other Matters Related to Ex Parte Appeals

Table of Contents

A. Effective Date (To be Announced)

B. Appeal Briefs

C. Examiner's Answers

D. Reply Briefs .

E. Petitions Under 37 CFR 41.3

F. Other Matters Related to Ex Parte Appeals - Ex Parte Ghuman)

A. Effective Date (To be Announced, see question A17)

A1. If a notice of appeal is filed on or after the effective date of the BPAI final rule, when is the appeal brief due?(Posted on 11/20/08; revised on 12/10/08)

The appeal brief is due two months from the filing of the notice of appeal. 37 CFR 41.37(c).

If appellant files a request for a pre-appeal brief conference, appellant’s brief is required to be filed within the later of: (1) two months from the date of filing of the notice of appeal (37 CFR 41.37(c)); or (2) one month from the mail date of the pre-appeal brief conference decision in which the conferees determine the appeal should proceed to the Board of Patent Appeals and Interferences (New Pre-Appeal Brief Conference Pilot Program, 1296 OG 67 (July 12 2005).

The time period is extendable under the provisions of 37 CFR 1.136 for patent applications and 37 CFR 1.550 (c) for ex parte reexamination proceedings. 37 CFR 41.37(d).

A2. If appellant reinstates the appeal after the prosecution is reopened by filing a second notice of appeal on or after the effective date, when is the second appeal brief due?(Posted on 11/20/08; revised on 12/10/08)

Appellant must file the second appeal brief (in compliance with the new format and content requirements of 37 CFR 41.37) within two months from the date of filing the second notice of appeal. 37 CFR 41.37(c).

The two month time period is extendable under the provisions of 37 CFR 1.136 for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.37(d).

A3. If appellant files a notice of appeal on or after the effective date, must the notice of appeal be signed?(Posted on 11/20/08; revised on 12/10/08)

Yes.

A notice of appeal filed on or after the effective date must be signed. 37 CFR 1.33(b). The provision of former 37 CFR 41.31(b) that a notice of appeal need not be signed has been removed. Papers filed in connection with an appeal, including the notice of appeal, would need to be signed. 37 CFR 1.33(b).

A notice of appeal filed before the effective date is not required to be signed. If a notice of appeal is filed on or after the effective date and it is not signed, the Office will not accept the unsigned notice of appeal as a proper reply to the previous Office action and the time period set forth in the Office action will continue to run.

A certificate of mailing or transmission in compliance with 37 CFR 1.8 will be applicable to determine whether the appeal brief was filed prior to the effective date in order to determine which rule applies.

A4. If appellant filed a notice of appeal before the effective date, but would not be able to file a timely appeal brief until on or after the effective date, is the notice of appeal required to be signed? (Posted on 11/20/08; revised on 12/10/08)

No.

Since the notice of appeal is filed before the effective date, the notice of appeal is not required to be signed.

A5. If appellant filed an initial notice of appeal before the effective date, and then the prosecution is reopened and the examiner entered an Office action, is a second notice of appeal that is filed on or after the effective date required to be signed? (Posted on 11/20/08; revised on 12/10/08)

Yes.

Any notice of appeal filed on or after the effective date, must be signed. 37 CFR 1.33(b).

A6. If the notice of appeal is filed before the effective date and the brief is filed on or after the effective date, would the appeal brief be required to comply with the new content and format requirements of 37 CFR 41.37? (Posted on 11/20/08; revised on 12/10/08)

Yes, any appeal brief filed on or after the effective date must be in compliance with the requirements set forth in revised 37 CFR 41.37 and be accompanied by the appropriate fee under 37 CFR 41.20(b)(2).

A7. If the appeal brief is filed in the new format under revised 37 CFR 41.37 before the effective date, would the Office hold it non-compliant? (Posted on 11/20/08; revised on 12/10/08)

No.

The Office will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date.

Accordingly, appeal briefs filed before the effective date must either comply with current 37 CFR 41.37 or revised 37 CFR 41.37 (in effect on or after the effective date). Appeal briefs filed on or after the effective date must comply with the revised 37 CFR 41.37 (in effect on or after the effective date). A certificate of mailing or transmission in compliance with 37 CFR 1.8 will be applicable to determine whether the appeal brief was filed prior to the effective date in order to determine which rule applies.

A8. If an appeal brief filed before the effective date fails to comply with the content and format requirements of current 37 CFR 41.37 (in effect before the effective date) and the Office mails appellant a notice of non-compliant appeal brief, would a corrected appeal brief filed on or after the effective date be required to be in compliance with revised 37 CFR 41.37 (in effect on or after the effective date)? (Posted on 11/20/08; revised on 12/10/08)

No.

A corrected appeal brief based on an appeal brief originally filed prior to the effective date, would be acceptable if it complies with either current 37 CFR 41.37(c) (in effect before the effective date) or revised 37 CFR 41.37 (in effect on or after the effective date), regardless of when the Office mailed a notice requiring correction of the noncompliant appeal brief.

A9. If appellant filed an appeal brief before the effective, under current 37 CFR 41.37, and appellant wants to file a reply brief on or after the effective date, is appellant required to file the reply brief in compliance with the revised 37 CFR 41.41? (Posted on 11/20/08; revised on 12/10/08)

No.

The reply brief must be filed in compliance with either the current 37 CFR 41.41 or the revised 37 CFR 41.41 (in effect on or after the effective date).

A10. If, after the filing of a notice of appeal, appellant files an amendment or evidence on or after the effective date, will revised 37 CFR 41.33 apply? (Posted on 11/20/08; revised on 12/10/08)

Yes.

Any amendment or evidence filed after the filing of a notice of appeal will be subject to revised 37 CFR 41.33 if it is filed on or after the effective date. For example, under revised 37 CFR 41.33(d), evidence filed on or after the effective date and after the submission of a notice of appeal may be admitted if: (1) the examiner determines that the evidence overcomes at least one rejection under appeal; (2) does not necessitate any new ground of rejection; and (3) appellant shows good cause as to why the evidence was not earlier presented.

A11. If the appeal brief is filed before the effective date, but the examiner’s answer is mailed on or after the effective date, can the examiner’s answer include a new ground of rejection? (Posted on 11/20/08; revised on 12/10/08)

No.

An examiner’s answer mailed on or after the effective date may not include a new ground of rejection.

A12. Can the examiner provide a supplemental examiner’s answer under 37 CFR 41.43 on or after the effective date? (Posted on 11/20/08; revised on 12/10/08)

No.

37 CFR 41.43 has been removed. The examiner will not respond to the reply brief.

A13. If an appellant filed an appeal brief in compliance with the requirements of current 37 CFR 41.37(c) before the effective date, but the fee for the brief was filed on or after the effective date within the time period for filing the appeal brief, would the appellant have to file a corrected appeal brief in compliance with revised 37 CFR 41.37 (in effect on or after the effective date)? (Posted on 11/20/08; revised on 12/10/08)

The Office will accept an appeal brief filed before the effective date, that complies with either the current 37 CFR 41.37(c) or revised 37 CFR 41.37 (in effect on or after the effective date) even if the fee for the brief was timely filed on or after the effective date.

A14. If the examiner made a new ground of rejection in the examiner’s answer that is mailed prior to the effective date, can appellant exercise one of the two options under current 37 CFR 41.39(b) if the option is exercised on or after the effective date? (Posted on 11/20/08; revised on 12/10/08)

Yes.

Appellant must exercise one of the two options under current 37 CFR 41.39(b). Failure to exercise one of the two options would require sua sponte dismissal of the appeal as to claims subject to the new ground of rejection.

A15. If the examiner mails a supplemental examiner’s answer under 37 CFR 41.43 prior to the effective date, can the appellant file another reply brief pursuant to 37 CFR 41.43(b) on or after the effective date? (Posted on 11/20/08; revised on 12/10/08)

Yes.

Appellant may file a reply brief pursuant to 37 CFR 41.43(b) if the date of the mailing of the supplemental examiner’s answer is prior to the effective date.

A16. If the requirements set forth in the Chapter 1200 of the Manual of Patent Examining Procedure (MPEP) (8th ed. 2001)(Rev. 3, August 2005) are inconsistent with the requirements set forth in the revised rules, which requirements are in effect? (Posted on 11/20/08; revised on 12/10/08)

The revised rules will be in effect on or after the effective date. The appropriate sections of the MPEP will be revised consistent with the revised rules after the effective date. Therefore, if an appellant is filing an appeal brief on or after the effective date, the appeal brief is required to be in compliance with revised 37 CFR 41.37 (in effect on or after the effective date).

A17. What is the effective date of the final rule? (Posted on 12/10/08)

The effective dates of the BPAI final rule 2008 will not be December 10, 2008. The Office will notify the public when the revised effective and applicability dates are set. In the subsequent notification, the Office will provide at least a 30-day time period before the BPAI final rule 2008 becomes effective. See Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Delay of Effective and Applicability Dates, 73 Fed. Reg. 74972 (December 10, 2008) (final rule; delay of effective and applicability dates).

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B. Appeal Briefs

B1. If the appeal brief contains a defect, would the Office provide a notice and an opportunity for the appellant to correct the defect? (Posted on 11/20/08)

Yes.

If the appeal brief contains certain defects (e.g., the “statement of facts” section is missing), the Appeal Center will provide appellant a notice of non-compliant appeal brief (PTOL-462) listing the defects and giving appellant a single opportunity to make the appropriate corrections by filing a corrected appeal brief within one month or thirty days, whichever is longer, from the mailing date of the notice to avoid termination of the appeal. The time period for filing the corrected appeal brief may be extended under 37 CFR 1.136(a) and (b).

B2. If appellant did not include a statement of the real party in interest, would the Office hold the appeal brief non-compliant? (Posted on 11/20/08)

No.

The Office will assume that the named inventors are the real party in interest.

B3. If appellant did not include a statement of related cases, would the Office hold the appeal brief non-compliant? (Posted on 11/20/08)

No.

The Office will assume that there is no related case.

B4. If appellant did not include a means or step plus function analysis section, would the Office hold the appeal brief non-compliant? (Posted on 11/20/08)

No.

The Office will assume that there is no means or step plus function limitation.

B5. If appellant did not include an evidence section in the appendix, would the Office hold the appeal brief non-compliant? (Posted on 11/20/08)

No.

The Office will assume that there is no evidence relied upon by the appellant.

B6. Does the table of contents need to include the [Reserved] sections (e.g., 37 CFR 41.37(e)(6))? (Posted on 11/20/08)

No.

B7. Is appellant required to set forth the entire record of the application in the “statement of facts” section of the appeal brief? (Posted on 11/20/08)

No.

Appellant is not required to set forth the entire record of the application in the “statement of facts” section. Currently, before the revised 37 CFR 41.37 takes effect, appellant has been required to set forth both the facts and arguments together. Appellant is not required under the revised 37 CFR 41.37 to set forth any more than what was previously required of an appellant. Appellant is simply required under the revised rule to separately set forth the facts in one section and the arguments in another section. Appellant is only required to set out the material facts relevant why the examiner erred in the rejection on appeal in the “statement of facts” section of the appeal brief.

For example, if the appellant is alleging that the examiner did not interpret a claim term consistent with the definition in the specification, the appellant should point out the specific page number of the specification where the definition appears in the “statement of facts” section and provide the argument in the “argument” section.

B8. Is the appeal brief defective if a fact used in the “argument” section does not appear in the “statement of facts” section? (Posted on 11/20/08)

No.

B9. If the appeal brief does not contain an identification of those claims that are being appealed, would the Office send appellant a notice of non-compliant appeal brief? (Posted on 11/20/08)

No.

Revised 37 CFR 41.37 does not require an identification of claims that are being appealed in the claims section. However, appellant must identify the claims that are subject to each rejection in the “Grounds of rejection to be reviewed” section, and identify the claims that are being argued separately or as a group in the “argument” section of the appeal brief.

B10. Is line numbering required? (Posted on 11/20/08)

No.

Appellant is not required to number the lines in the appeal brief. If appellant wishes to number the lines to assist the examiner and BPAI panel, the line numbering may be provided within the left margin.

B11. Does the “means or step plus function analysis” section need to fully duplicate a claim already present in the “claim support and drawing analysis” section? (Posted on 11/20/08)

No.

However, the following two items are still required in the “means or step plus function analysis” section:

(1) Appellant must identify each claimed means or step plus function limitation(s). For example:
Claim 1 contains the following three means plus function limitations which are the “means for XXXXX”, “means for YYYYYY”, and “means for ZZZZZ.”

(2) Appellant must identify where to find the structure, material, or acts corresponding to each claimed function which was identified. For example:
The structure, material, or acts corresponding to each of these three means plus-function limitations is set forth in boldface between braces in the annotated copy of claim 1 found in the Claims Support and Drawing Analysis Section of this appendix.

B12. If appellant wants to withdraw a rejected claim from appeal, can appellant use the status identifier “withdrawn” or “canceled” for such a rejected claim in the claims section of the appendix of the appeal brief? (Posted on 11/20/08)

No.

Before filing an appeal brief, appellant should determine which rejected claims and grounds of rejection to appeal. If appellant decides to appeal fewer than all of the rejected claims, appellant should file an amendment in compliance with 37 CFR 1.121 to cancel the rejected claims that are not being appealed. See 37 CFR 41.33 and 1.116.

The status identifier “withdrawn” is not intended for appellant to withdraw a rejected claim from an appeal. Appellant may only use the status identifier “withdrawn” for claims to an invention that were not elected in response to a restriction requirement, an election of species, or an unity of invention requirement made by the examiner in the application and such claims were previously withdrawn from further consideration in response to the requirement.

The status identifier “canceled” is for claims that were previously canceled by an amendment.

B13. Can appellant use the same claim status identifiers as required by the amendment practice under 37 CFR 1.121? (Posted on 11/20/08)

No.

It is important for appellant to use only the five status identifiers set forth in 37 CFR 41.37(p) for the claims provided in the claims section of the appeal brief (e.g., 1 (rejected), 2 (withdrawn), 3(objected to), 4 (cancelled), and 5 (allowed)). The Office will be reasonable in determining whether the status of the claims is accurate. For example, the Appeal Center will not hold the appeal brief non-compliant if the status of the claim can be reasonably determined even when the appellant used a status identifier that is not identical to any of the five status identifiers (e.g., “twice rejected”, which would be treated as "rejected").

The status identifiers required under 37 CFR 1.121 for amending the claims are different than those required by 37 CFR 41.37(p) in the claims section of the appeal brief. Some of the identifiers are the same (e.g., “cancelled” and “withdrawn”), however, it would not be proper to use other 1.121 status identifiers in an appeal brief (e.g., “currently amended” and “original”).

B14. Can the examiner send appellant a notice of non-compliant appeal brief if the examiner determines that the appeal brief is defective (e.g., a statement of facts is missing)? (Posted on 11/20/08)

No.

The examiner may not send appellant a notice of non-compliant appeal brief unless it is approved by the appeal specialist in the appropriate technology center. The Appeal Center will review the appeal brief and forward the brief to the examiner if the brief or corrected brief is acceptable. Thus, this procedure will reduce the number of notices of non-compliant appeal brief sent in the same application.

B15. If the Appeal Center sends appellant a notice of non-compliant appeal brief to require a corrected appeal brief and appellant fails to respond to the notice within the time period for reply, who will process the termination of the appeal? (Posted on 11/20/08)

After the time period for reply expires, the examiner will process the abandonment of the application if there is no allowed claim in the application. If there is at least one allowed claim, the examiner will cancel the rejected claims and mail a notice of allowability and notice of allowance.

B16. How would the Office treat the following non-compliance in the claims section of the appeal brief (e.g., a pending claim is missing from the claims section or the status identifier “cancelled” is used for a claim that was not previously cancelled)? (Posted on 11/20/08)

The Appeal Center will send appellant a notice of non-compliant appeal brief.

B17. How would the Office treat the inconsistency between the “grounds of rejection to be reviewed,” the argument section, and the claims section? (Posted on 11/20/08)

The claims section must contain a correct listing of the pending claims. The appeal brief will be held non-compliant if the claim listing is not accurate.

If appellant listed all of the grounds of rejection in the “grounds of rejection to be reviewed,” but presented (1) no argument for a ground of rejection to be reviewed, (2) a general allegation that the examiner erred as to a ground of rejection, or (3) a request for the Office to hold a rejection in abeyance, the BPAI most likely will pro forma affirm the rejection. Section 41.37(o) requires appellant to explain why the examiner erred as to each ground of rejection to be reviewed and address all points made by the examiner with which the appellant disagrees.

Furthermore, 37 CFR 41.37(o)(2) states that only arguments presented in the argument section which address claims set out in the Claim Support and Drawing Analysis Section in the appendix will be considered and that the appellant waives all other arguments in the appeal.

B18. If the BPAI noticed that a claim is missing in the claim section, will the BPAI remand the application back to the examiner or the Appeal Center? (Posted on 11/20/08)

The BPAI will remand the application to the Appeal Center so that the Appeal Center will send the appellant a notice of non-compliant appeal brief requiring a corrected appendix that contains a complete listing of the claims.

B19. If appellant did not identify where each argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner, will the Office hold the appeal brief non-compliant? (Posted on 11/20/08)

No, the Office will not hold such appeal brief non-compliant. In this case, the Office will treat each argument as a new argument that has not previously been made to the examiner.

B20. If appellant previously made an argument that alleges the examiner’s rejection is improper, can the appellant provide further explanation and or a new argument in the appeal brief? (Posted on 11/20/08)

Yes.

Appellant may provide further explanation of appellant's argument made previously. Appellant may also provide a new argument not previously made.

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C. Examiner's Answers

C1. What are the required sections in an examiner’s answer? (Posted on 11/20/08)

An examiner’s answer must contain the following sections except when it is noted as optional: (1) status of claims and amendments; (2) status of evidence; (3) grounds of rejection to be reviewed on appeal; (4) examiner’s statement of facts; and (5) response to arguments

In the “grounds of rejection to be reviewed on appeal” section, the examiner must list the rejections made in the final rejection (as modified by any advisory action), or the action from which the appeal is taken, that are being maintained by the examiner in the examiner’s answer. A new ground of rejection is not permitted in an examiner’s answer.

C2. Is there a page limit on an examiner’s answer? (Posted on 11/20/08)

Yes, the examiner’s answer (counting only the response to arguments section) may not exceed 30 pages, with the following exceptions:
(a) An approval from the appropriate Director of the Technology Center to exceed the 30-page limit for an examiner’s answer; or
(b) If appellant filed a request to exceed the 30-page limit of the appeal brief and the request has been granted, the examiner may enter an examiner’s answer (counting only the response to arguments section) that has the same page limit as the appeal brief.

C3. What section of the examiner’s answer should include a statement identifying related cases known to the examiner? (Posted on 11/20/08)

A statement identifying by application, patent, appeal, interference, or reexamination control number all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by, or have a bearing on the BPAI’s decision in the pending appeal, should be included in the “examiner’s statement of facts” section of the examiner’s answer. Copies of any decisions rendered by a court or the BPAI in any proceeding identified should be included at the end of the examiner’s answer.

C4. Is the examiner required to list the same grounds of rejection (and same claims) listed in the “grounds of rejection to be reviewed” in the appeal brief? (Posted on 11/20/08)

No.

The examiner is required to list all grounds of rejection (and the claims that are subject to each grounds of rejection) that the examiner wishes to maintain.

C5. Is a certified English language translation required for any non-English language reference relied upon in a rejection made by the examiner? (Posted on 11/20/08)

No.

A machine translation will be sufficient. If appellant argues that the machine translation is not accurate, the BPAI will order a certified English language translation before deciding on the appeal rather than remanding the application to the examiner.

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D. Reply Briefs

D1. If appellant timely filed a reply brief that contains a defect, would the Office provide a notice and an opportunity for the appellant to correct the defect? (Posted on 11/20/08)

Yes.

If the reply brief contains certain defects, the Office will provide appellant a notice of non-entry of reply brief listing the defects. Appellant may file a corrected reply brief in compliance with 37 CFR 41.41 within the later of: (1) 15 days from the mailing of the notice, or (2) the remainder of the 2-month time period under 37 CFR 41.41(b) from the mailing of the examiner’s answer. If appellant fails to file a corrected reply brief within this time period, the Office will forward the application to the BPAI.

D2. Can appellant present a new argument in a reply brief? (Posted on 11/20/08)

Appellant must present all of the arguments in the appeal brief. However, in the reply brief, the appellant may fully respond to any argument raise by the examiner in his or her answer, but may go no farther. See the response to comment 93 in the BPAI final rule at 73 FR 32967, left column. If appellant makes a new argument in a reply brief that is not responsive to the examiner’s answer, and could have been made in the appeal brief, then the BPAI will not consider the new argument.

D3. Can examiners provide a supplemental examiner’s answer to response to a reply brief? (Posted on 11/20/08; revised on 12/10/08)

No.

Examiners may not provide a supplemental examiner’s answer to response to a reply brief on or after the effective date.

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E. Petitions Under 37 CFR 41.3

E1. Does appellant need a petition under 37 CFR 41.3 to request an extension of time to file an appeal brief? (Posted on 11/20/08)

No.

An appellant need not file a petition under 37 CFR 41.3 to request for an extension of time to file an appeal brief. The time for filing an appeal brief is extendable under 37 CFR 1.136(a) for applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.37(d).

Absent a pre-appeal brief request, the maximum extendable time period for filing an appeal brief is seven months (two months pursuant to 37 CFR 41.37(c) and five months extensions of time under 37 CFR 41.37(d) and 37 CFR1.136(a)).

E2. Does appellant need a petition under 37 CFR 41.3 to request an extension of time to file a reply brief? (Posted on 11/20/08)

Yes.

Any request for an extension of time to file a reply brief must be presented as a petition under 37 CFR 41.3. Previously, any request for extension of time was handled under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings.

E3. Does appellant need to file a petition under 37 CFR 41.3 to request an extension of time to file a request for oral hearing pursuant to 37 CFR 41.47? (Posted on 11/20/08)

Yes.

Any request for an extension of time to file a request for oral hearing must be presented as a petition under 37 CFR 41.3. Previously, any request for an extension of time to file a request for oral hearing was handled under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexaminations.

E4. Does appellant need to file a petition under 37 CFR 41.3 to request an extension of time to file a request for rehearing pursuant to 37 CFR 41.52? (Posted on 11/20/08)

Yes.

Any request for an extension of time to file a request for rehearing must be presented as a petition under 37 CFR 41.3.

E5. When must a petition under 37 CFR 41.3 to request an extension of time to file a reply brief under 37 CFR 41.41(c), a request for oral hearing under 37 CFR 41.47(c), or a request for a rehearing under 37 CFR 41.52(d) be filed in order to be timely? (Posted on 11/20/08)

Appellant must file the petition under 37 CFR 41.3 before or on the due date. The filing of the petition under 37 CFR 41.3 does not toll the time period.

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F. Other Matters Related to Ex Parte Appeals - Ex Parte Ghuman

F1. How would the Office handle the situation where the appellant appeals fewer than all of the rejected claims? (Posted on 11/20/08; revised on 12/10/08)

37 CFR 1.113(c) requires a reply to a final rejection or action to include cancellation of, or appeal from the rejection of, each rejected claim. Similarly, 37 CFR 1.111(b) requires that a reply to a non-final action must reply to every ground of objection and rejection. Before filing an appeal brief, appellant should determine which rejected claims and grounds of rejection to appeal. If appellant decides to appeal fewer than all of the rejected claims, appellant should file an amendment in compliance with 37 CFR 1.121 to cancel the rejected claims that are not being appealed. See 37 CFR 41.33 and 1.116.

If the appellant clearly identified fewer than all of the rejected claims as being appealed in the appeal brief or other papers, the Office will consider this as an authorization to cancel the rejected claims that are not on appeal before the application is forwarded to the BPAI for a decision. See Ex parte Ghuman 88 USPQ2d 1478 (Bd. Pat. App. & Int. 2008)(prededential). The examiner will enter an examiner’s amendment to cancel the rejected claims that are not being appealed.

If the appellant only appeals a dependent claim, but not the independent claim, the examiner may either: (1) cancel the independent claim and rewrite the dependent claim into independent format; or (2) cancel the independent claim and require the appellant to rewrite the dependent claim into independent format.

If the applicant’s intention to appeal the rejection of fewer than all of the pending claims is unclear from the appeal brief, the brief will be rejected as defective.

F2. How would the Office handle the situation where the appellant appeals fewer than all of the grounds of rejection made in the final rejection that have not been withdrawn by the examiner? (Posted on 11/20/08)

37 CFR 1.113(c) requires a reply to a final rejection or action to include cancellation of, or appeal from the rejection of, each rejected claim. Similarly, 37 CFR 1.111(b) requires that a reply to a non-final action must reply to every ground of objection and rejection. Section 41.37(o) requires appellant to explain why the examiner erred as to each ground of rejection to be reviewed and address all points made by the examiner with which the appellant disagrees. Furthermore, 37 CFR 41.37(o)(2) states that the appellant waives all other arguments in the appeal. Therefore, if the appellant did not present any argument on the ground of rejection that is not contested, the BPAI may pro forma affirm the rejection.

For example: The examiner rejected claims 1-20 using two rejections: (1) claims 1-20 are rejected under 35 U.S.C. 103 based on patents A and B; and (2) claims 1-20 are rejected under 35 U.S.C. 112, 2nd, for indefiniteness. Appellant appealed only the rejection under 35 U.S.C. 103(a) based on patents A and B, but not the second rejection under 35 U.S.C. 112, 2nd. Appellant identified only the first rejection in the “grounds of rejection to be reviewed on appeal” section of the appeal brief and did not allege any errors or present any argument for the second rejection. If the examiner maintained both rejections in the examiner’s answer and responded to appellant’s arguments on the first rejection, the BPAI may pro forma affirm the second rejection.

Another example: The examiner made a prior art rejection and an obvious double patenting rejection, but the appellant only appeals the prior art rejection. If the examiner maintains both the prior art rejection and the obvious double patenting rejection in the examiner’s answer, the BPAI may pro forma affirm the obvious double patenting rejection.

F3. If appellant expressly identifies fewer than all of the rejected claims as being appealed in the appeal brief, when does the examiner need to cancel the rejected claims that are not on appeal? (Posted on 11/20/08)

The examiner is required to enter an examiner’s amendment to cancel the rejected claims that are not being appealed at the time of the mailing of the examiner’s answer or before the mailing of the examiner’s answer to avoid the necessity of a remand from the Board. The examiner’s amendment must be mailed as a separate paper so that the amendment can be easily identified.

F4. If appellant appealed a ground of rejection but identified fewer than all of the claims rejected on that ground in the “grounds of rejection to be reviewed” section of the appeal brief, should the examiner cancel the rejected claims that are not identified? (Posted on 11/20/08)

No.

In this situation, the examiner should not cancel the claims. The examiner should maintain the rejections as to all of the rejected claims made in the final rejection in the examiner’s answer.

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