5 Written Questions
5 Matching Questions
- What is two actions by patentee are not appealable?
- Appeal Conference and Examiner's Answer
- 1206: Amendments, affidavits, other evidence that gets filed with or after the appeal:
- 1213: What Decisions the Board may Make:
- Where are content requirements for appeal brief spelled out?
- a 1) non-entered claims, and
2) non-entered amendments
- b 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
- c MPEP 1206
- d 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.
- e The board can reverse the examiner's rejection, affirm it in whole or in part, or remand. Remember, that for a later court case, that a decision to remand cannot be brought up for judicial review (only an affirmation of the rejection).
1213.01: The Board may simply state how the applicant could amend an appealed claim such that it would be allowed. The applicant may then properly amend the claim within the time period for seeking court review (that is a 2 month window starting from the date of the board's final decision).
1213.02: New Grounds for Rejection: the Board can make a rejection on new grounds for any claim it wants to. (even if the claim was not previously rejected). Remember, this is different than the examiner who can only reject a claim on new grounds if he had already rejected the same claim for different reasons (an examiner it not allowed to find a new ground to reject a claim he previously put into allowance).
5 Multiple Choice Questions
- 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
- There is a mandatory appeal conference when a valid appeal brief is filed. It has: the main examiner for the app, the supervisory patent examiner, and a conferee examiner who is experienced in the area that the patent covers.
- f the brief is non compliant, the applicant will be notified and has a 1 month (30 day) time to correct. The time is extendable under 1.136 (a)(b), and the appeal will be dismissed if the applicant fails to comply. If the applicant actually disagrees with the finding that the brief is non-conformant, he may petition under 37 CFR 1.181 or 41.3, but the due date for the corrections will not toll.
- withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them).
- 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.
5 True/False Questions
Disclaimers: Remember, there are 2 kinds: → 1) Statutory Disclaimers
2) Terminal Disclaimers:
What are two examples of time limit situations for filing an appeal? → 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).
Amendments after filing notice → There is a mandatory appeal conference when a valid appeal brief is filed. It has: the main examiner for the app, the supervisory patent examiner, and a conferee examiner who is experienced in the area that the patent covers.
What do appeal matters concern and who deals with them? → Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences
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: → 1211.01: Further consideration of a rejection
1211.02: Remand to consider a new amendment
1211.03: Remand for new affidavits or declarations