A new amendment must be submitted in a separate paper. Entry of a new amendment in an application on appeal is not a matter of right. The entry of an amendment (which may not include a new affidavit, declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33.
Amendments filed after the filing of a notice of appeal, but prior to the date of filing a brief, may be admitted only to:
If the examiner denies the entry of such an amendment, the examiner should use form PTOL-303, "Advisory Action Before the Filing of an Appeal Brief," to notify the applicant of the non-entry and the reason for non-entry.
Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 and within the time period set forth in 37 CFR 90.3 may be admitted only to:
37 CFR 41.37(c)(2) provides that a brief shall not include any non-admitted amendment. Thus, appellants may not include an amendment under 37 CFR 41.33(b) in the appeal brief. Should appellants wish to file an amendment at the same time as a brief, appellants must submit such an amendment in a paper separate from the appeal brief.
Rewriting dependent claims into independent form as permitted under 37 CFR 41.33(b)(2) includes the following situations:
Amendments filed after jurisdiction of the appeal is transferred to the Board are not considered prior to the expiration of the time period set forth in 37 CFR 90.3 unless the case is remanded by the Board for consideration of the amendment. If an amendment is considered non-compliant the applicant may not be granted additional time to submit a substitute amendment. As such, it is recommended that appellant rewrite dependent claims, which have been objected to as being allowable except for their dependency on a rejected independent claim, before the appeal is forwarded to the Board. Such amendments must be filed before the expiration of the time period set forth in 37 CFR 90.3, to avoid cancellation of the objected to claims. This includes dependent claims in which the rejections are withdrawn by the examiner in the Examiner’s Answer. See MPEP §§ 1214.06 and 1214.07.
If the examiner denies entry of an amendment filed on or after the date of filing a brief, the examiner should use form PTOL-304, "Advisory Action After the Filing of an Appeal Brief," to notify the applicant of the non-entry and the reason for non-entry.
Examiners must respond to all amendments filed after an appeal has been taken and prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a). If the examiner indicates (in the advisory action) that an amendment would be entered, it is imperative for the examiner to also state (in the same advisory action) how the individual rejection(s) set forth in the final Office action will be impacted by the entry of the amendment except where an amendment merely cancels claims or rewrites dependent claims in independent form. If the examiner determines that an amendment clearly places the application in condition for allowance, the examiner may enter the amendment and allow the application. Except for amendments that meet the conditions set forth above, all other amendments submitted after the date of filing a notice of appeal will not be entered except as permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
See MPEP §§ 714.02, 714.12 and 714.13 for the treatment of amendments, affidavits and other evidence submitted after the mailing of a final rejection or a non-final rejection, but prior to the filing of a notice of appeal under 37 CFR 41.31(a). Any amendment, affidavit or other evidence filed after the mailing date of a final Office action and on or before the date of the notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.116. Any amendment, affidavit or other evidence filed after the mailing date of a non-final Office action and on or before the date of notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CFR 1.111.
An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded for that purpose. See MPEP §§ 1210 and 1211.02.
Affidavits or other evidence (e.g., declarations or exhibits) submitted after the date of filing a notice of appeal, but prior to the date of filing a brief pursuant to 37 CFR 41.37, may be admitted if the examiner determines that:
If the examiner denies the entry of such an affidavit or other evidence, the examiner should use form PTOL-303, "Advisory Action Before the Filing of an Appeal Brief," to notify the applicant of the non-entry and the reason for non-entry.
If the examiner determines that an affidavit or other evidence clearly places the application in condition for allowance, the examiner may enter the affidavit or other evidence and allow the application. Except as noted above, all other affidavits or other evidence filed after the date of filing a notice of appeal pursuant to 37 CFR 41.31(a)(1) - (a)(3) will not be admitted except as permitted by 37 CFR 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
An amendment, affidavit or other evidence received after jurisdiction has passed to the Board should not be considered by the examiner unless remanded or returned by the Board for such purpose. See MPEP §§ 1210 and 1211.02.
Information Disclosure Statements submitted after the date of a notice of appeal are normally held in abeyance pending a decision on the appeal. Consideration of Information Disclosure Statements is based on MPEP § 609 and 37 CFR 1.97 and 1.98 and not on 37 CFR 41.33.
After an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may:
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.
On the examiner’s answer, below the primary examiner’s signature, the word "Conferees:" should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director - i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.
Examiner’s answers may be returned for correction by the Patent Appeal Center if they do not comply with the guidelines set forth below.
A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading "WITHDRAWN REJECTIONS."
The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.
The examiner should furnish the appellant with a written statement in answer to the appellant’s brief within 2 months after the receipt of the brief by the examiner. While 37 CFR 41.39(a) states the examiner "may" furnish a written answer, current procedures do not permit an appeal to proceed to the Board without an examiner's answer. The mailing date of the examiner's answer begins 1) the period for filing a reply brief, which in turn transfers jurisdiction to the Board as described in 37 CFR 41.35(a); 2) the time for appellants to request for an oral hearing as described in 37 CFR 41.47(b); and 3) the time period for the payment of the appeal forwarding fee unless a petition was filed under 37 CFR 1.181 to designate a new ground of rejection in the examiner's answer. See 37 CFR 41.45(a). In the event that the final rejection fully addresses the arguments in the appeal brief, the examiner should complete an examiner's answer with a typical "Grounds of Rejection to be Reviewed on Appeal" section and a simplified "Response to Arguments" section that simply refers to the appropriate portion of the final rejection.
Before preparing the answer, the examiner should make certain that each after-final amendment or evidence has been indicated as being entered or not-entered and an advisory action has been entered for each after-final amendment or evidence to notify the appellant of the entry or non-entry. The Board may remand to the examiner any application in which an after-final amendment or evidence has not been indicated as entered or not-entered and acted upon in an advisory action.
The examiner should treat affidavits, declarations, or exhibits filed with the notice of appeal in accordance with 37 CFR 1.116. If an affidavit, declaration, or exhibit was refused entry in the Record under 37 CFR 1.116 or prohibited by 37 CFR 41.33, the examiner should not comment on it in the examiner’s answer. Likewise, it would be improper for appellant to rely on an affidavit, declaration, or exhibit, which was not entered, in an appeal brief. If appellant has grounds for challenging the non-entry of an affidavit, declaration, or exhibit, they should file a timely petition under 37 CFR 1.181 seeking supervisory review of the non-entry. Any affidavits or declarations in the file swearing behind a reference should be clearly identified by the examiner as being considered under 37 CFR 1.131.
If a document being relied upon by the examiner in support of a rejection is in a language other than English, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection. The translation may be a machine translation or an English equivalent of the non-English document. See MPEP § 2120 for reliance upon abstracts and foreign language documents in support of a rejection.
Examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the appellant as being appealed. The Board will presume that all of the rejected claims are on appeal except for any claims subsequently canceled by an amendment filed by appellant. Therefore, the examiner will treat all pending, rejected claims as being on appeal, and maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer and should identify that the appellant has not argued the rejection in the appeal brief. In the instance where the appellant has failed to argue a non-statutory double patenting rejection or requested such rejection be held in abeyance, the examiner may use FP 12.278.
Because of the practice of the Office in entering amendments after final action under justifiable circumstances for purposes of appeal, many cases coming before the Board for consideration contain claims which are not the claims treated in the examiner’s final rejection. They are either entirely new claims or amended versions of the finally rejected claims or both. Where an amendment under 37 CFR 1.116 or 41.33 would be entered for appeal purposes, the examiner must identify (in an advisory action) how one or more individual rejections set forth in the final rejection would be used to reject the added or amended claim(s).
The examiner should reevaluate their position in the light of the arguments presented in the brief, and should expressly withdraw any rejections not adhered to in the "WITHDRAWN REJECTIONS" subsection of the examiner’s answer. If the examiner withdraws all of the rejections of an independent claim that was previously under rejection while still maintaining the rejections of other claims, then the answer should note the change of status of the claim(s). The answer should also include changes to the status of dependent claims should all rejections of a dependent claim be withdrawn. If the examiner withdraws all rejections to a dependent claim, while maintaining the rejection of the independent claim from which the claim depends, the applicant may file an amendment pursuant to 37 CFR 41.33(b)(2) rewriting the claims in independent form. If the rejection of the independent claim is affirmed on appeal, the amendment to rewrite the claim in independent form under 37 CFR 41.33(b)(2) must be presented prior to the expiration of the time period set forth in 37 CFR 90.3. See MPEP §§ 1214.06 and 1214.07.
A new ground of rejection is permitted in an examiner’s answer. See MPEP § 1207.03. If reopening of prosecution is necessary, the examiner must obtain approval from the supervisory patent examiner prior to reopening prosecution after an appeal. See MPEP § 1002.02(d) and § 1207.04.
All correspondence with the Board, whether by the examiner or the appellant, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122(a) can be cited by the examiner or the appellant except that either the examiner or the appellant may cite an unpublished decision in an application having common ownership with the application on appeal.
If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, application file, and an explanatory memorandum should be forwarded to the TC Director for consideration. See MPEP § 1003. If approved by the TC Director, the examiner’s answer should be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for final approval.
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Application Number: [1]
Filing Date: [2]
Appellant(s): [3]
__________________
[4]
For Appellant
EXAMINER’S ANSWER
This is in response to the appeal brief filed [5].
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. This form paragraph is printed with the USPTO letterhead.
3. In bracket 1, insert the application number of the appealed application.
4. In bracket 2, insert the filing date of the appealed application.
5. In bracket 3, insert the name(s) of the appellant.
6. In bracket 4, insert the name of the registered representative of the appellant.
7. In bracket 5, indicate the date on which the brief was filed.
Every ground of rejection set forth in the Office action dated [1] from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading "WITHDRAWN REJECTIONS." New grounds of rejection (if any) are provided under the subheading "NEW GROUNDS OF REJECTION."
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
4. Use form paragraph 12.256 to introduce any new grounds of rejection.
5. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
6. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.
The ground(s) of rejection set forth in the Office action dated [1] from which the appeal is taken have been modified by the [2] dated [3]. A list of rejections withdrawn by the examiner (if any) is included under the subheading "WITHDRAWN REJECTIONS." New grounds of rejection (if any) are provided under the subheading "NEW GROUNDS OF REJECTION."
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
3. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
4. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
5. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
6. Use form paragraph 12.256 to introduce any new grounds of rejection.
7. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
8. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.
The following ground(s) of rejection are applicable to the appealed claims.
[1]
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Precede this form paragraph with either 12.254.01 or 12.254.02.
3. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
4. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
5. In bracket 1, explain each ground of rejection maintained by the examiner.
NEW GROUNDS OF REJECTION
[1]
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
3. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
4. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.279.01: (1) to notify applicant of the reply period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or the TC Director's designee.
WITHDRAWN REJECTIONS
The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert the grounds of rejection that have been withdrawn.
(2) Response to Argument
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. If an issue raised by appellant was fully responded to under the "Grounds of Rejection to be Reviewed on Appeal" portion, no additional response is required here.
3. If an issue has been raised by appellant that was not fully responded to under "Grounds of Rejection to be Reviewed on Appeal," a full response must be provided after this form paragraph.
This appeal includes a rejection of claims [1] which are rejected on the ground of non-statutory double patenting. This rejection was not addressed in the appellant's appeal brief. Should the Board either summarily affirm or not reach the rejection and the appellant should fail to overcome the rejection with a properly filed terminal disclaimer prior to seeking judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141 ) or by civil action in the U.S. District Court for the Eastern District of Virginia (35 U.S.C. 145 ) the appeal may be dismissed by the Court for lack of jurisdiction because the claims on appeal are subject to the non-statutory double patenting rejection. Alternatively, the Court may summarily affirm the non-statutory double patenting rejection without considering other grounds of rejection challenged on the appeal.
1. For use when claims are subject to the non-statutory double patenting rejection that has not been argued in the appeal brief.
2. In bracket 1, insert the claim numbers of the claims subject to the non-statutory double patenting rejection.
For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
[1]
Conferees:
[2]
[3]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
3. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.
4. In bracket 3, insert correspondence address of record.
5. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.
For the above reasons, it is believed that the rejections should be sustained.
This examiner’s answer contains a new ground of rejection set forth in section (1) above. Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1) and should be in compliance with the other requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1).
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
Respectfully submitted,
[1]
A Technology Center Director or designee must personally approve the new ground(s) of rejection set forth in section (1) above by signing below:
[2]
Conferees:
[3]
[4]
Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. In bracket 1, insert initials of the examiner and the date.
