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5 Written Questions

5 Matching Questions

  1. 1205.02: What actually goes into the Appeal Brief:
  2. 1215.04: When an appeal is dimissed by the Board:
  3. What is a caveat for appeals?
  4. 1211.02: Remand to consider a new amendment:
  5. What do appeal matters concern and who deals with them?
  1. a There is no obligation to consider new amendments during the appeal, but: If the amendment is just to cancel claims that are not part of the proceeding, or to re-write dependent claims in independent form (this is important to avoid abandonment in some cases, see below) then the board will remand if there is an amendment.
  2. 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.
  3. c 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.
  4. d 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.
  5. e Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences

5 Multiple Choice Questions

  1. TIME: the request is 2 months from the examiner's initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically.
  2. 1) Statutory Disclaimers
    2) Terminal Disclaimers:
  3. 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.
  4. MPEP section 1208 recites 11 content requirements
  5. 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

5 True/False Questions

  1. Amendments after filing notice1) Must be made before jurisdiction passes to the Board
    2) Allowed if amendment adopts a suggesion made, or if it removes an issue
    3) Not allowed if raises new issues or increases total number of claims
    4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant)

          

  2. What is two actions by patentee are not appealable?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.

          

  3. What are two steps for appealing?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.

          

  4. How many oral hearing may an applicant request in front of the boardOne

          

  5. Timing of Filing a Request for Oral Hearing1) It's optional, and must be filed within 2 months of examiner's answer
    2) Good cause EOT

          

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