¶ 12.111 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 41.50 (a)(2).
¶ 12.119 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 and the proposed amendment was not suggested in an explicit statement by the Board under 37 CFR 41.50 (c). 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.
¶ 12.119.01 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).
¶ 12.119.02 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(a) 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.
¶ 12.120 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.
¶ 12.121 Withdrawal of Appeal as to Some of the Claims on Appeal
The withdrawal of the appeal as to claims [1] operates as an authorization to cancel these claims from the application or reexamination proceeding. See MPEP § 1215.03. Accordingly, these claims are canceled.
Examiner Note:
1. In bracket 1, insert the claim numbers of the claims that were withdrawn from appeal.
¶ 12.149 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] appealing from the Office action mailed [6].
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, and also indicate if any supplemental appeal brief was filed, as well as the date on which the supplemental appeal brief was filed.
7. In bracket 6, indicate the date on which the Office action being appealed was mailed.
8. Form paragraphs 12.149 to 12.179.01, as appropriate, should be used if the appeal brief was filed on or after September 13, 2004.
¶ 12.150.01 Real Party in Interest
(1) Real Party in Interest
The examiner has no comment on the statement, or lack of statement, identifying by name the real party in interest in the brief.
¶ 12.150.04 Related Appeals and Interferences
(2) Related Appeals and Interferences
Examiner Note:
Follow this form paragraph with form paragraph 12.150.05 or 12.150.06.
¶ 12.150.05 Identification of the Related Appeals and Interferences
The following are the related appeals, interferences, and judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal:
Examiner Note:
1. Follow this form paragraph with an identification by application, patent, appeal or interference number of 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 Board’s decision in the pending appeal.
2. Include a copy of all court and Board decisions identified in this section in a related proceeding(s) appendix using form paragraphs 12.162 and 12.162.02.
¶ 12.150.06 No Related Appeals and Interferences Identified
The examiner is not aware of any related appeals, interferences, or judicial proceedings which will directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.
¶ 12.151 Status of Claims
(3) Status of Claims
Examiner Note:
Follow this form paragraph with form paragraph 12.151.01.
¶ 12.151.01 List of Rejected Claims That Are Pending
The following is a list of claims that are rejected and pending in the application: [1].
Examiner Note:
In bracket 1, list all the claims that are rejected and pending in the application, including any claims that are rejected but were omitted from the appellant’s listing (if any) of appealed claims in the Notice of Appeal. Do not list claims which are no longer rejected.
¶ 12.152 Status of Amendments After Final
(4) Status of Amendments After Final
Examiner Note:
Follow this form paragraph with form paragraph 12.152.01.
¶ 12.152.01 No Comment on Appellant’s Statement of Status of Amendments
The examiner has no comment on the appellant’s statement of the status of amendments after final rejection contained in the brief.
¶ 12.153 Summary of Claimed Subject Matter
(5) Summary of Claimed Subject Matter
Examiner Note:
Follow this form paragraph with form paragraph 12.153.01.
¶ 12.153.01 No Comment on Appellant’s Statement of the Summary of Claimed Subject Matter
The examiner has no comment on the summary of claimed subject matter contained in the brief.
¶ 12.154 Grounds of Rejection to be Reviewed on Appeal
(6) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
Follow this form paragraph with form paragraph 12.154.01.
¶ 12.154.01 Examiner’s Statement of Grounds of Rejection
The examiner has no comment on the appellant’s statement of the grounds of rejection to be reviewed on appeal. Every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) 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. Use form paragraph 12.154.04 to introduce any new grounds of rejection.
2. Use form paragraph 12.154.05 to withdraw a ground of rejection previously made in the final Office action or last Office action.
¶ 12.154.04 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) in the following sections of the answer:
(6) Grounds of Rejection to be Reviewed on Appeal (form paragraph 12.154) – use this form paragraph in section (6) of the answer to provide a concise statement of each new ground of rejection presented for review in bracket 1; and
(9) Grounds of Rejection (form paragraph 12.159) – use this form paragraph in section (9) of the answer to set forth the new grounds of rejection.
2. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.179.01: (1) to notify applicant of the response period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.
¶ 12.154.05 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.
¶ 12.156 Claims Appendix
(7) Claims Appendix
Examiner Note:
Follow this form paragraph with form paragraph 12.156.01.
¶ 12.156.01 No Comment on Appellant’s Claims Appendix
The examiner has no comment on the copy of the appealed claims contained in the Appendix to the appellant’s brief.
¶ 12.157 Evidence Relied Upon
(8) Evidence Relied Upon
Examiner Note:
Follow this form paragraph with either form paragraph 12.157.01 or 12.157.02.
¶ 12.157.01 No Evidence Relied Upon
No evidence is relied upon by the examiner in the rejection of the claims under appeal.
¶ 12.157.02 Listing of Evidence Relied Upon
The following is a listing of the evidence (e.g., patents, publications, Official Notice, and admitted prior art) relied upon in the rejection of claims under appeal.
Examiner Note:
1. Use the following format for providing information on each reference cited:
Number Name Date
2. The following are example formats for listing reference citations:
2,717,847 VERAIN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document)
3. See MPEP § 707.05(e) for additional examples.
¶ 12.159 Grounds of Rejection
(9) Grounds of Rejection
The following ground(s) of rejection are applicable to the appealed claims:
Examiner Note:
1. Explain each ground of rejection maintained by the examiner as provided below:
(i) For each rejection under 35 U.S.C. 112, first paragraph, the Examiner’s Answer shall explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any, (a) do not describe the subject matter defined by each of the rejected claims, (b) would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims, and (c) do not set forth the best mode contemplated by the appellant of carrying out his/her invention.
(ii) For each rejection under 35 U.S.C. 112, second paragraph, the Examiner’s Answer shall explain how the claims do not particularly point out and distinctly claim the subject matter which appellant regards as the invention.
(iii) For each rejection under 35 U.S.C. 102, the Examiner’s Answer shall explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.
(iv) For each rejection under 35 U.S.C. 103, the Examiner’s Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter
(v) For each rejection under 35 U.S.C. 102 or 103 where there may be questions as to how limitations in the claims correspond to features in the prior art, the examiner, in addition to the requirements of (ii), (iii) and (iv) above, should compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison shall align the language of the claim side by side with a reference to the specific page, line number, drawing reference number and quotation from the prior art, as appropriate.
(vi) For each rejection, other than those referred to in paragraphs (i) to (v) for this section, the Examiner’s Answer shall specifically explain the basis for the particular rejection.
2. If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner’s answer.
¶ 12.161 Response to Argument
(10) 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.
¶ 12.162 Related Proceeding(s) Appendix
(11) Related Proceeding(s) Appendix
Examiner Note:
Follow this form paragraph with either form paragraph 12.162.01 or 12.162.02.
¶ 12.162.01 No Related Proceeding Identified
No decision rendered by a court or the Board is identified by the examiner in the Related Appeals and Interferences section of this examiner’s answer.
¶ 12.162.02 Copies Related to Proceeding
Copies of the court or Board decision(s) identified in the Related Appeals and Interferences section of this examiner’s answer are provided herein.
¶ 12.163 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.
¶ 12.179 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 12.179.01 instead of this form paragraph.
¶ 12.179.01 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 (9) 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)(vii) 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 (9) 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.
¶ 12.179.02 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.
¶ 12.181 Acknowledgment of Reply Brief
The reply brief filed [1] has been entered and considered. The application has been forwarded to the Board of Patent Appeals and Interferences for decision on the appeal.
Examiner Note:
1. In bracket 1, insert the date on which the reply brief was filed.
2. Use this form paragraph to notify the appellant under 37 CFR 41.43 (a)(1) that a reply brief has been received and entered.
3. This form paragraph is to be printed on a blank page for attachment to a PTOL-90 or PTO-90C.
4. Include form paragraph 12.184 after this paragraph to include a supplemental examiner’s answer under 37 CFR 41.43 (a)(1) responding to any new issue raised in the reply brief.
¶ 12.182 Reply Brief Not Considered
The reply brief filed on [1] has not been considered because it is not in compliance with 37 CFR 41.41 (a). The reply brief [2].
Examiner Note:
1. In bracket 1, insert the date on which the reply brief was filed.
2. In bracket 2, insert the reasoning. For example, insert "was not filed within the non-extendable time period set in 37 CFR 41.41 (a)(1)" or insert "included a new or non-admitted amendment or new or non-admitted affidavit or other evidence" .
3. Use this form paragraph to notify the appellant under 37 CFR 41.41 (b) that a reply brief is not being considered because it is not in compliance with 37 CFR 41.41 (a).
¶ 12.184 Supplemental Examiner’s Answer -No option to Reopen Prosecution
Responsive to [1] on [2], a supplemental Examiner’s Answer is set forth below: [3].
Appellant may file another reply brief in compliance with 37 CFR 41.41 within two months of the date of mailing of this supplemental examiner’s answer. Extensions of time under 37 CFR 1.136 (a) are not applicable to this two month time period. See 37 CFR 41.43 (b)-(c).
A Technology Center Director or designee has approved this supplemental examiner’s answer by signing below:
[4]
Examiner Note:
1. In bracket 1, insert the reason the supplemental examiner’s answer is being prepared, e.g., " the remand under 37 CFR 41.50 (a)(1) for reasons other than for further consideration of a rejection" , or "the reply brief under 37 CFR 41.41 filed" .
2. In bracket 2, insert the date of remand or the date the reply brief was filed.
3. In bracket 3, provide the supplemental examiner’s answer (e.g., pursuant to 37 CFR 41.43 (a), without raising any new grounds of rejection.
4. In bracket 4, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every supplemental examiner’ s answer.
¶ 12.185 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.
¶ 12.186 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.
¶ 12.187 Reopening of Prosecution After Appeal Brief or Reply 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).
¶ 12.209 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) .