5 Written questions
5 Matching questions
- 1215: Withdrawing or Dismissing an Appeal:
- 1205.03: If a brief is non-compliant:
- Who can appeal and when?
- 1205.02: What actually goes into the Appeal Brief:
- Amendments after filing notice
- a 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.
- b 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)
- c 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.
- d Patentee can appeal whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov. 29, 1999; only finally rejected after said date.
- e 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.
5 Multiple choice questions
- 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.
- 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.
- 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
- 1) It's optional, and must be filed within 2 months of examiner's answer
2) Good cause EOT
5 True/False questions
1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board): → Normally once the application is in appeal, the appellant has no right to enter in amendments to the app. However: If the amendment is accompanied by a 37 CFR 1.114 RCE, then the app will go back into prosecution via the RCE along with the amendment.
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
Affidavits & Other Evidence: → This extra evidence may be admitted, but only if the examiner determines that:
1) The affidavits or other evidence that overcome all rejections under appeal.; and
2) The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier.
Terminal Disclaimers → Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection).
It must expressly disclaim the terminal part of the patent's term.
IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed.
Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.
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.