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5 Written questions

5 Matching questions

  1. 1213: What Decisions the Board may Make:
  2. Amendments filed on or after the date of the appeal brief: (less leeway)
  3. Appeal Conference and Examiner's Answer
  4. 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:
  5. Amendments after filing notice
  1. a 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).
  2. b 1211.01: Further consideration of a rejection
    1211.02: Remand to consider a new amendment
    1211.03: Remand for new affidavits or declarations
  3. c 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)
  4. d 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. 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. 1) non-entered claims, and
    2) non-entered amendments
  2. 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.
  3. Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
  4. 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. 1) Must identify claims being appealed
    2) New arguments are allowed but new evidence is not allowed
    3) Must traverse all grounds of rejection
    4) All claims of a group must stand or fall together, unless stated otherwise
    5) If notice of defects issued by PTO, must reply to action being appealed

5 True/False questions

  1. AppealsRemember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f).

          

  2. 1214.06: What happens when the Examiner is sustained in whole or in part: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. 1215: Withdrawing or Dismissing an Appeal:1215.01: Withdrawing an appeal: As long as the withdrawal will not actually cause the app to be abandoned, an atty who is not of record (or the atty of record or the applicant) can withdraw an appeal under 37 CFR 1.34.
    Another way to withdraw from appeal is to file an RCE (37 CFR 1.114) along with the 37 CFR 1.117(e) fee and re-open the app for prosecution under the RCE.
    Remember: If the board has a rejection on new grounds in its ruling, or if the examiner files a supplemental answer (after the initial answer) that includes new grounds of rejection, then the applicant has the right to re-open prosecution on the new rejection by filing the standard 37 CFR 1.111 response along with affidavits/evidence under 37 CFR 1.130/1.131/1.132.

          

  4. Appeal process1) File notice of appeal within 2 months of final (second) rejection on merits
    2) EOT available for up to 3 more months

          

  5. Failure to provide the appeal brief1) Must identify claims being appealed
    2) New arguments are allowed but new evidence is not allowed
    3) Must traverse all grounds of rejection
    4) All claims of a group must stand or fall together, unless stated otherwise
    5) If notice of defects issued by PTO, must reply to action being appealed