1220 Appeal Procedure - Notice of Appeal Filed On or After January 23, 2012 [R-9]
I. BOARD RULES EFFECTIVE JANUARY 23, 2012
New rules governing practice before the Board of Patent Appeals and Interferences in ex parte patent appeals went into effect on January 23, 2012. See Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed. Reg. 72270 (November 22, 2011). The rules apply to ex parte appeals in patent applications (including reissue, design and plant patent applications) and ex parte reexamination proceedings. The new rules do not apply to inter partes reexamination appeals or contested cases. See MPEP §§ 2674 through 2682 for appeals in inter partes reexamination proceedings.
II. FORM PARAGRAPHS
New form paragraphs 12.209 through 12.298 are provided below for use in ex parte appeals where the notice of appeal was filed on or after January 23, 2012. Subsection II.A. provides form paragraphs 12.249 through 12.279.02 for creating the examiner’s answer. Subsection II.B. provides the remainder of form paragraphs to be used in place of the form paragraphs appearing elsewhere in this MPEP chapter if the notice of appeal was filed on or after January 23, 2012.
A. Contents of Examiner’s Answer
The following form paragraphs must be used instead of the form paragraphs in MPEP § 1207.02 if the notice of appeal was filed on or after January 23, 2012.
¶ 12.249 Examiner’s Answer Cover Sheet
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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].
Examiner Note:
1. This form paragraph is printed with the USPTO letterhead.
2. In bracket 1, insert the application number of the appealed application.
3. In bracket 2, insert the filing date of the appealed application.
4. In bracket 3, insert the name(s) of the appellant.
5. In bracket 4, insert the name of the registered representative of the appellant.
6. In bracket 5, indicate the date on which the brief was filed.
¶ 12.254 Grounds of Rejection to be Reviewed on Appeal
(1) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
Follow this form paragraph with form paragraph 12.254.01 or 12.254.02.
¶ 12.254.01 Statement of Grounds of Rejection, not modified
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."
Examiner Note:
1. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
2. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
3. Use form paragraph 12.256 to introduce any new grounds of rejection.
4. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
5. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.
¶ 12.254.02 Statement of Grounds of Rejection, modified
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."
Examiner Note:
1. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
2. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
3. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
4. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
5. Use form paragraph 12.256 to introduce any new grounds of rejection.
6. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
7. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.
¶ 12.255 Restatement of Rejection
The following ground(s) of rejection are applicable to the appealed claims.
[1]
Examiner Note:
1. Precede this form paragraph with either 12.254.01 or 12.254.02.
2. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
3. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
4. In bracket 1, explain each ground of rejection maintained by the examiner.
¶ 12.256 New Grounds of Rejection - Heading
NEW GROUNDS OF REJECTION
[1]
Examiner Note:
1. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
2. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
3. 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 his/her designee.
¶ 12.257 Withdrawn Rejections
WITHDRAWN REJECTIONS
The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].
Examiner Note:
In bracket 1, insert the grounds of rejection that have been withdrawn.
¶ 12.261 Response to Argument
(2) Response to Argument
Examiner Note:
1. 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.
2. 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.
¶ 12.279 Conclusion to Examiner’s Answer, No New Grounds of Rejection
For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
[1]
Conferees:
[2]
[3]
Examiner Note:
1. In bracket 1, insert initials of the examiner and the date.
2. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.
3. In bracket 3, insert correspondence address of record.
4. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.
¶ 12.279.01 Conclusion to Examiner’s Answer Raising New Grounds of Rejection
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]
Examiner Note:
1. In bracket 1, insert initials of the examiner and the date.
2. In bracket 2, insert TC Director’s or designee’s signature. All new grounds of rejection must be approved by a TC Director or designee.
3. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.
4. In bracket 4, insert correspondence address of record.
B. Other Ex Parte Appeals Form Paragraphs
The form paragraphs below are to be used instead of the form paragraphs appearing in other sections of this MPEP chapter if the notice of appeal was filed on or after January 23, 2012. The form paragraphs appearing in previous sections of this chapter will be removed and replaced with the form paragraphs from this MPEP section once older applications and proceedings have received a decision on appeal.
¶ 12.209 Appeal Dismissed - Allowed Claims, Formal Matters Remaining
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a)(1), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136
Examiner Note:
1. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
2. In bracket 2, insert a description of the formal matters to be corrected.
3. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.
¶ 12.210 Extension To File Brief - Granted
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been approved for [2].
Examiner Note:
1. In bracket 2, insert the amount of time the extension of time has been approved for.
2. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2).
¶ 12.211 Extension To File Brief - Denied
The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been disapproved because no sufficient cause for the extension has been shown.
Examiner Note:
This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .
¶ 12.239 Reopening of Prosecution After Appeal Brief
In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
[4]
Examiner Note:
1. In bracket 1, insert --appeal brief--, --supplemental appeal brief--, --reply brief-- or --supplemental reply brief--.
2. In bracket 2, insert the date on which the brief was filed.
3. In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.
4. In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04.
5. Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).
¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer
Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection. Under 37 CFR 41.39(b) , if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. In bracket 1, insert the mailing date of the examiner’s answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
¶ 12.279.03 Request to Present Oral Arguments
The examiner requests the opportunity to present arguments at the oral hearing.
Examiner Note:
1. Use this form paragraph only if an oral hearing has been requested by appellant and the primary examiner intends to present an oral argument.
2. This form paragraph must be included as a separate letter on a form PTOL-90.
¶ 12.285 Supplemental Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Board of Patent Appeals and Interferences on [1] for further consideration of a rejection, a supplemental Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the supplemental examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(1) Reopen prosecution. Request that prosecution be reopened before the 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 issues set forth in the remand or raised in the supplemental examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .
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.
A Technology Center Director or designee has approved this supplemental examiner’s answer by signing below:
[3]
Examiner Note:
1. In bracket 1, insert the date of the remand.
2. In bracket 2, provide reasons supporting the rejections set forth in the supplemental Examiner’s Answer.
3. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every supplemental examiner’s answer.
¶ 12.286 Dismissal Following A Supplemental Examiner’s Answer Written in Response to a Remand for Further Consideration of a Rejection
Appellant failed to timely respond to the supplemental examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2) , appellant must, within two months from the date of the supplemental examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2), the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
1. In bracket 1, insert the mailing date of the supplemental examiner’s answer.
2. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.
¶ 12.291 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)
The Board of Patent Appeals and Interferences affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form to avoid ABANDONMENT of the application. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) WILL BE GRANTED. Prosecution is otherwise closed.
Examiner Note:
1. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
2. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
¶ 12.292 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least One Allowed Claim)
The Board of Patent Appeals and Interferences affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136 WILL BE GRANTED. Failure to comply will result in cancellation of the dependent claims and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.
Examiner Note:
1. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
2. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
3. In bracket 3, enter the claim number(s) of the allowed claims.
¶ 12.297 Period For Seeking Court Review Has Lapsed
The period under 37 CFR 1.304 for seeking court review of the decision by the Board of Patent Appeals and Interferences rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b) .
The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.
Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note:
1. In bracket 1, enter the date of the decision.
2. In bracket 2, identify the allowed claims.
3. In bracket 3, identify the formal matters that need correction.
¶ 12.298 Amendment After Board Decision, Entry Refused
The amendment filed [1] after a decision by the Board of Patent Appeals and Interferences is not entered because prosecution is closed. As provided in 37 CFR 1.198, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner after a final decision of the Board except under the provisions of 37 CFR 1.114 (request for continued examination) or 37 CFR 41.50 without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
Examiner Note:
1. In bracket 1, insert the date the amendment was filed.
2. This form paragraph is not to be used where a 37 CFR 41.50(b) rejection has been made by the Board of Patent Appeals and Interferences.