5 Written questions
5 Matching questions
- 1214.05: What happens when Claims are Withdrawn from the Appeal:
- What are two examples of time limit situations for filing an appeal?
- What do appeal matters concern and who deals with them?
- What is a caveat for appeals?
- Reconsideration and Court Appeal
- a One important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection.
- b Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences
- c Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.
- d 1) Can request rehearing on paper within 2 months from Boards decision
2) Good cause extension of time available
3) Court action must start within 2 months (at least 60 days) from decision
- e Say there is a final office action (3 month SSP), and the applicant files notice to appeal within 1 month of the office action. If the applicant fails to submit his actual appeal brief within 2 months of the notice, but still gets it in before the original SSP. Then the applicant still has to file a petition for a time extension. (Same thing can happen with an RCE, if the RCE is filed > 2 months after the office action, but before the 3 month SSP, a petition for a 1 month extension is needed).
5 Multiple choice questions
- 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.
- 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.
- MPEP 1206
- Petition matters dealing with objections to formal/procedural matters made to the Commissioner
- This extra evidence may be admitted, but only if the examiner determines that:
1) The affidavits or other evidence that overcome all rejections under appeal.; and
2) The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier.
5 True/False questions
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 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).
1211.03: Remand for new affidavits or declarations: → 1) The examiner's supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration.
2) Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed:
1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response.
2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response.
1205.02: What actually goes into the Appeal Brief: → Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
Components of the brief:
1. Real party of interest (the inventor/applicant/assignee)
2. Related appeals & interferences (background info on other proceedings)
3. Status of Claims (which ones are allowed/rejected)
4. Status of Amendments
5. Summary of claimed subject matter
6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
7. Argument (why the claims should not be rejected)
8. Claims appendix
9. Evidence appendix (this is where additional affidavits and other evidence are put)
10. Related proceedings appendix.
Timing of Filing a Request for Oral Hearing → Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
1215.03: Partial Withdrawal: → Patentee can appeal whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov. 29, 1999; only finally rejected after said date.