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5 Written questions

5 Matching questions

  1. 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:
  2. How many oral hearing may an applicant request in front of the board
  3. Amendments after the notice of appeal, but before the appeal brief is submitted may contain:
  4. When should the examiner's response arrive and what should it include?
  5. 1216: The People's Court: Going to Court: When can it happen?
  1. a 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.
  2. b The examiner's answer should come within 2 months of the receipt of the brief by the examiner and should contain:

    responses to arguments in the brief and point out errors in the brief.

    If the appeal is persuasive the examiner should also expressly withdraw his rejection on grounds where the appeal was persuasive.
  3. c 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.
  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 One

5 Multiple choice questions

  1. 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. MPEP section 1208 recites 11 content requirements
  3. 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).
  4. Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
  5. A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally 'unintentional' or 'unavoidable'; remember that a successful 37 CFR 1.137 acts as an RCE).

5 True/False questions

  1. What is required to be in appeal brief?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.

          

  2. 1214.04: What happens when the Examiner is Reversed in full: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.

          

  3. Amendments filed on or after the date of the appeal brief: (less leeway)MPEP 1206

          

  4. 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.

          

  5. 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.

          

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