5 Written questions
5 Matching questions
- Affidavits & Other Evidence:
- 1211.02: Remand to consider a new amendment:
- 1211.01: Further consideration of a rejection:
- When should the examiner's response arrive and what should it include?
- How many oral hearing may an applicant request in front of the board
- 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.
- b One
- c 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.
- d 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.
- e 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.
5 Multiple choice questions
- Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
- These are only considered when the appellant makes the showing under 37 CFR 1.116(c) as to why the affidavits are necessary, and as to why they were not presented earlier.
- 1) It's optional, and must be filed within 2 months of examiner's answer
2) Good cause EOT
- 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) 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)
5 True/False questions
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: → 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.
Appeal Conference and Examiner's Answer → 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief: → 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.
Appeal process → 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
1215.03: Partial Withdrawal: → What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given).