5 Written questions
5 Matching questions
- What does MPEP section 1208 recite?
- Terminal Disclaimers
- 1213: What Decisions the Board may Make:
- Affidavits & Other Evidence:
- 1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board):
- a 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.
- b 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).
- c MPEP section 1208 recites 11 content requirements
- d 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.
- e 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.
5 Multiple choice questions
- At this point, the app goes directly back to the examiner, he will either then put all the claims in allowance and get the patent ready for issue, or the examiner may request his own re-hearing (again a 2 month time frame for that re-hearing).
- 1.REOPEN THE PROSECUTION and enter in a new ground for rejection (as long as this is approved by his supervising examiner).
2. WITHDRAW THE FINAL REJECTION and allowing the claims (when the appeal overcomes the grounds for rejection). or;
3. MAINTAIN THE APPEAL by drafting an examiner's answer that will go along with the appeal brief to the board. After 20040913 this brief may also contain new grounds for a rejection too.
- Remember, 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).
- Closes prosecution for rejected claims
Can enter a new ground of rejection for any claim
- 1) Statutory Disclaimers
2) Terminal Disclaimers:
5 True/False questions
Amendments after filing notice → 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)
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.
1211.02: Remand to consider a new amendment: → 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.
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 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).
What statute deals with appeal procedure? → 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