5 Written Questions
5 Matching Questions
- Appeal Conference and Examiner's Answer
- 1210: Actions that can happen after the examiner makes his answer, but before the Board actually makes a decision: (37 CFR 41.35)
The application & appeal will bounce from the TC (where normal examination happens) to the Board (for appeal) at one of these two times:
- What are two steps for appealing?
- 1215.04: When an appeal is dimissed by the Board:
- 1211: When the Board remands an appeal back to the Examiner:
This can happen in different situations where the board wants the examiner to look at the app again:
- a 1) Examiner must answer within 2 months from receipt of appeal brief
2) MPEP section 1208 recites 11 content requirements
3) No new ground of rejection
4) If new grounds, examiner must reopen prosecution; like a regular office action
- b When there is no appeal brief filed within the 37 CFR 41.37 time frame (2 months from filing of notice of appeal) the appeal gets dismissed.
Remember: If some claims are still allowable, the patent can still issue with the allowable claims, but all others get canceled.
- c 1211.01: Further consideration of a rejection
1211.02: Remand to consider a new amendment
1211.03: Remand for new affidavits or declarations
- d 1) After 2 months from the time of the examiner's answer/supplemental answer if the applicant does not file a reply brief to that answer; or
2) If the applicant did file a reply brief, after the examiner notifies the applicant that the reply brief has been entered & considered and that the appeal will go to the board.
- e (37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee.
Step 2: Actually file an appeal brief:
TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the "date in" at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting.
5 Multiple Choice Questions
- What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given).
- 1. cancel claims (remaining claims could be allowed)
2. rewrite dependent claims into independent form (if a broader independent claim is shot down, the dependent claim with all of the limitations of its parent + extra limitations might still be allowable and needs to become an independent claim if the parent is no more).
- If no claims are allowed at all: After the Board's decision the 2 month limit for taking the case to court starts running. After that is over, if there has been no court action the app is abandoned.
THIS IS WHY IT IS IMPORTANT TO PUT DISPUTED DEPENDENT CLAIMS INTO INDEPENDENT FORM: If it turns out that a parent independent claim is not allowed, but that a dependent claim (that has further limitation) would be allowed except for the fact that it is a dependent claim.... the app is still abandoned anyway! (It is up to the applicant to get the claims ready for this eventuality).
When some of the claims are allowed:
There is no requirement to file any further reply, the claims that are allowed will go back to the examiner (most likely to issue, or perhaps to have the examiner request a re-hearing). If there is no reply the other claims will be canceled.
When the claims require further action: (Like in a case where a generic claim rejection is reversed so more work is needed no the claim by the examiner): It just goes back to the examiner for more work.
- make a request for the appellant to file a brief that gives the board the info it wants. If the appellant does not respond within the time period set by the board, the appeal may be dismissed.
- Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.
5 True/False Questions
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 1. claim cancellations
2. any corrections to comply with formal requirements (spelling, punctuation ...)
3. present the previously rejected claims in a form that is better for appeal; or
4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier.
Option 2: Going to the DC Circuit Court: → If all claims were previously rejected then this court's decision is final on the patent one way or another.
If however some claims were previously allowed, then only the claims that were rejected are at an end, the allowed claims can continue to issuance.
Remand: The court can remand back to prosecution just as the Board can, although the examiner cannot request a re-hearing. The court will give the merits it wants the examiner to consider.
When is one in a position to appeal? → In order to even have an appeal available the USPTO has to have issued a second rejection on a claim. The second rejection could either be a normal final rejection, or it could be a rejection where the claim was initially rejected in the original app, a CIP/CPA/RCE was filed to continue the app, and then the same claim was rejected in the continuation (1 time original + 1 time continuation == 2 rejections).
1206: Amendments, affidavits, other evidence that gets filed with or after the appeal: → it is not a matter of right to have new amendments added on to the application during the appeal process. The amendment process during appeals is under 37 CFR 41.33, and not under the (more permissive) 37 CFR 1.116.
1214: What to do when the Board rejects on a New Ground: (remember, now there is a new issue for the applicant to respond to):
The applicant's choices are: → 1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary
Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.
2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.
3)1214.03: The Rehearing:
The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.