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5 Written Questions

5 Matching Questions

  1. 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:
  2. 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:
  3. 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:
  4. 1206: Amendments, affidavits, other evidence that gets filed with or after the appeal:
  5. Timing
  1. a 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.
  2. b 1) Must be filed within the greater of: 2 months of PTO receipt of notice; or
    2) time left to reply to the action being appealed
    3) EOT for up to 5 months
    4) Failure to file brief dismisses appeal and abandons application if no allowed claims
  3. c 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.
  4. d 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.
  5. e 1211.01: Further consideration of a rejection
    1211.02: Remand to consider a new amendment
    1211.03: Remand for new affidavits or declarations

5 Multiple Choice Questions

  1. What's the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed).
    The circuit court can issue the same decisions as the appellate court above.
  2. 1) 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)
  3. Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
  4. 1) non-entered claims, and
    2) non-entered amendments
  5. One

5 True/False Questions

  1. What are two examples of time limit situations for filing an appeal?(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.

          

  2. Disclaimers: Remember, there are 2 kinds:1) Statutory Disclaimers
    2) Terminal Disclaimers:

          

  3. Option 1: Directly to the Federal Circuit Court of Appeals:What's the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed).
    The circuit court can issue the same decisions as the appellate court above.

          

  4. 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.

          

  5. When should the request for an oral hearing be made?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.

          

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