1501.02(b)   Examining Attorney’s Appeal Brief

After the applicant’s brief has been filed, the Board will send a notice to the examining attorney.  The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and send a copy to the applicant.  37 C.F.R. §2.142(b)(1).   See TBMP §1203.02(b).

The examining attorney’s appeal brief should be concise and contain a complete statement of reasons for the refusal(s) or requirement(s) and supporting facts.

Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief.  The purpose of this format is to promote consistency and to provide content guidelines.  The substance of the appeal brief is a matter of individual discretion.

The brief may not exceed twenty-five double-spaced pages in length.  37 C.F.R. §2.142(b)(2); TBMP §1203.01.   See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).

Because the record must be complete prior to appeal, the Board will normally not consider evidence submitted with the applicant's or examining attorney's brief.  However, if the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered.  If the examining attorney does not object to the evidence, and discusses it in his or her brief or elsewhere in the record, the Board will treat it as of record.  37 C.F.R. §2.142(d); TBMP §1207.03; TMEP §710.01(c) .   See In re Broyhill Furniture Industries, Inc. , 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).

If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, or to suspend), the examining attorney should submit a request for remand instead of an appeal brief.   See TMEP §1504.05 .  If the Board grants the examining attorney’s request, the Board will stay further proceedings in connection with the appeal.  If the Board denies the request, it will reset the time for submission of the examining attorney’s appeal brief.