Question #1
Definitely know that dependent claims objected for their dependency on a rejected independent claim will be treated as if rejected if appeal doesn’t overcome the independent claim’s rejection (this includes withdrawal of the appeal). The application IS NOT abandoned/allowed right away, but rather goes back to the examiner’s jurisdiction, whereupon he’ll either allow the application with any surviving claims or, if no claims survived, abandon it.
Question #2 New grounds for rejection by the Board
Got a few questions on new ground of rejection by the board (not examiner, which surprised me a little, since I thought they’d test this new ground more heavily).
The fact pattern looks like: (1) two claims 1 and 2 rejected and appealed to the board. (2) board affirms rejection on 1. (3) board overturns rejection on 2. (4) board enters new rejection on 2. (5) applicant chooses to reopen prosecution on 2. (6) claim 2 rejected again.
=> so what should applicant do ? file new appeal on 2 ? file new appeal on 2 and get judicial review on rejection 1 at the same time ?
I think you cannot get the Board to consider claim 1 at this time (should have requested a rehearing when the original affirmance was made) [Edit 7/31/07: no need to make an immediate request for reconsideration: MPEP 1214.01 "...If the appellant elects to proceed before the examiner with regard to the new rejection, the Board's affirmance of the examiner's rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time."]. You can file a new appeal on claim 2 though — see 1214.01.
MPEP 1214.01:
The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
Question #3 Number of Rejections
Know that after ANY claim has been twice rejected, and you are currently under a rejection, you can appeal.
Number of Rejections Required for Appeal purposes when count from parent to continuation
Have X # of claims. All rejected. File continuation with same X claims. rejected in continuation. Can you appeal to board? Answer choices: Yes, b/c there has been ONE rejection. Yes, b/c there has been TWO rejections. Other 3 choices are “not appealable”. Correct Anwswer? Look it up. :)
MPEP 1204 The limitation of “twice rejected” does not have to be related to a particular application…. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. >Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection.
***In the reexamination, is the extension to file appeal brief available?
From the forum “There’s one question I vaguely remember but cannot forget in the exam I took a month ago. I’m forgetting the small details, but the outline is like this: “the examiner gave a final rejection to the claim, and the practitioner filed the continuation with an amendment to the claim which contains a new issue. The examiner rejected the amended claim in the continuation application ( i don’t remember exactly but maybe it’s the new ground of rejection). Can the practitioner file a notice of appeal?” This claim is rejected twice which is appealable, but it’s rejected only once on the basis of new ground. I can’t find MPEP chapter 1200 talking about new ground of rejection as to the twice rejected claim. Am I missing any important point?? I hope someone help me on this. Thanks!”
Question #4
Got an old exam question repeat regarding what happens when an applicant files an RCE with no fee during appeal (treated as a withdrawal of appeal, but since the RCE was improper, the application is abandoned if no claims stand allowed or issued with any allowed claims–all claims dependent on a rejected independent claim will be canceled by the Examiner before he passes the application to allowance).
Question #5
Board remand – I know on the old exam the answer was that the board could not remand to examiner for consideration of an affidavit or amendment. Though there is discussion of how the board could possibly remand for consideration of amendment in E8R4, the old answer’s reasoning still stands (there is no mention in the question facts that the applicant properly stated with the amendment why it was not entered sooner). It seems this is still the answer.
Question #6
Appeal: when the board affirms the rejection and also supplies new ground for the rejection, What‘s the action of examiner? Choose reopen the prosecution and provide the amendment overcoming the affirmation and new ground.
{ 26 comments… read them below or add one }
I had Question 1 on the test for sure. Can anyone sum up Question 1?
I meant Question 2, not 1, thanks for this site!!!!!
I got a two similar new questions on appeal and new grounds of rejection on my exam.
Fact pattern is like this: The board affirms the rejection of claims 1-5 and also rejects claims 6-10 with new grounds.
in the fact pattern of version 1 it also says the applicant submitted and amendment for claims 6-10 and chose to pursue before the examiner and at the same time submitted a request for reconsideration. rehearing for claims 1-5. which one of the following id correct. The correct answer choice for this version was the board wits until the examiner finishes his work on the claims 6-10, then the board considers the request on claims 1-5.
the second version on top of the above fact pattern actually asked which one of the following is wrong?
one of the right statements (so not the correct answer choice) I remember
- the applicant can open a second appeal if claims 6-10 is still rejected after the examiner is done, but the second appeal can only include claims 6-10 not 1-5.
unfortunately, I do not remember the wrong statement I chose. But, the selection was easy looking at MPEP 1200.
In my exam, I also got the questions listed as 2,4 and 5 above. So Appeal is still heavily tested.
in the reexamination
2274
III. EXTENSION OF TIME FOR FILING APPEAL BRIEF
In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a petition **>with the appropriate extension of time< fee, to the Technology Center (TC), requesting additional time (usually 1 month), and give reasons for the request. The petition should ** contain the address to which the response is to be sent. If sufficient cause is shown and the petition is filed prior to the expiration of the period sought to be extended (37 CFR 1.550(c)), the TC Director is authorized to grant the extension for up to 1 month. Requests for extensions of time for more than 1 month will also be decided by the TC Director, but will not be granted unless extraordinary circumstances
are involved; e.g., death or incapacitation of the patent owner. The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday.
Had about 20 (no kidding) questions about appeals today. Chapter 1200 was opened ALL THE TIME! All variants mentioned here, including board isssuing new ground of rejection, where can’t the board remand the case to the Examiner (to consider affidavits entered after the notice of appeal was filed – that was my answer), what happens if Examiner is partly affirmed and so on, no claims stand allowed, etc.
Nearly Precise Variant of Question #1 on 4/27/2011 (seems to be an old exam repeat)
I got thess questions 5/16/2011.
Got this question today 5/18/11.
TON OF THEM. Several on what happens to claims after rejection affirmed. Objected dependent, rejected dependent, after reopening prosecution for new grounds and overturning both the original affirmation and the new ground.
What if claims 1 and 2 are rejected by the Examiner and appealed to the Board; the Board affirms the rejection of claim 1 and overturns the rejection of claim 2; the applicant appeals to the Federal Circuit (or files an action in the District Court) the Board’s decision. What happens to claim 2 during the pendency of the appeal to the Federal Circuit?
Claim 1 is determined by the CAFC. If rejected, then claim 2 only will be allowed
If CAFC passes claim 1 – then both claim 1 and 2 are allowed.
Claim 2 just waits until claim 1 can be decided upon
This question is extremely difficult for me. 23 of April 2003 pm. How do you approach the question?
The claims in a patent application having been twice or finally rejected, the applicant files a timely Notice of Appeal on January 2, 2003. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following situations should the USPTO not notify the applicant that the Appeal Brief is defective and allow him an opportunity to correct the deficiency?
(A) The Appeal Brief is filed on July 10, 2003, without a request for extension of time under 37 CFR 1.136.
(B) The Appeal Brief is submitted unsigned.
(C) The Appeal Brief states that the claims do not stand or fall together, and presents argument as to why the claims are separately patentable, but the primary examiner does not agree with the applicant’s argument.
(D) The Appeal Brief does not state whether the claims stand or fall together, but presents arguments why the claims subject to the same rejection are separately patentable.
(E) The Appeal Brief does not address one of the grounds of rejection stated by the primary examiner.
i see it as the fact that the examiner does not agree with applicant’s argument is not a matter of deficiency. the appeal brief is not deficient, the examiner just doesn’t agree with applicant’s reasoning therefore he should address that in the examiner’s answer. the other choices result in the appeal brief not being complete.
Thank you so very much. What place of 1200 talks about “claims stand or fall together”?
1205 under appeal brief, under (vii) argument.. search using the phrase… as a group
Multiple appeal questions on 07/25/11.
Appeals question asked when new arguments may be accepted after filing a reply brief. Answer choices were along the lines of:
Statement I: Three months after Examiner’s Answer
Statement II: Four months after Examiner’s Answer
Statement III: Seven weeks before Oral Hearing, and a written copy of the arguments is submitted
Statement IV: When a recent relevant decision is made at the Board or Federal Circuit, and a written copy of the arguments is submitted
Can’t remember the answers, but I found the following MPEP section helpful:
1209 Oral Hearing
37 CFR 41.47. Oral hearing.
…
(2)Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
I couldn’t find anything that supported new arguments following the Reply Brief other than that part of 41.47, but it seems that “Statement IV” only and “Statements III and IV” were both choices. I believe I went with only the one about recent relevant decisions.
Agree, but one additional point.
Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except (A) upon a showing of good cause, appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court, and (B) new arguments responding to a new ground ofrejection made pursuant to 37 CFR 41.50(b).
Got #1, #2 and #4 on 10/15/2011. I think I saw at lease 5 questions about appeal. I recommend to read MPEP 1214.06 several times.
Ditto – tons of questions on appeals and also rejections (every 102 and lots of obviousness)
I cannot find support for
“The application IS NOT abandoned/allowed right away.”
When no allowable claims, is the app abandoned upon withdrawl or dismissal? I am not sure.
The below seems implying that a request for rehearing of affirmed rejections should be file while reopening prosecution of new rejections. I think it is not correct.
I think you cannot get the Board to consider claim 1 at this time (should have requested a rehearing when the original affirmance was made) [Edit 7/31/07: no need to make an immediate request for reconsideration: MPEP 1214.01 "...If the appellant elects to proceed before the examiner with regard to the new rejection, the Board's affirmance of the examiner's rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time."]. You can file a new appeal on claim 2 though — see 1214.01.
As stated, there is no need to request a rehearing at that time. Your right is not lost in regard to rehearing the affirmed rejections. Because……
If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
THEN you can request rehearing of the affirmed rejections.
The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP § 1214.03 and § 1216.
Anybody confirm #3?
ANY claim get twice rejected, regardless if on the same ground or different grounds, you can appeal. RIGHT?
Sol,
I think confirmed (ANY claim twice rejected, regardless if on same ground or different, you can appeal).
Pursuant to Statute and Rule, an Applicant may appeal the rejection of any claim that has been twice rejected, regardless of whether the claim has been finally rejected. In particular, 35 U.S.C. 134(a) provides that:
An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
Also, 37 CFR 41.31(a)(1) provides that:
An applicant for a patent dissatisfied with a primary examiner’s decision in the second rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee.
FURTHERMORE:
1213.02 New Grounds of Rejection by Board [R-3]
(b) (My paraphrase) If The Board gets new knowledge of any grounds not involved in the appeal for rejecting any pending claim, it can make a new rejection, A new ground of rejection pursuant to this paragraph ***shall not be considered final for judicial review***
HOWEVER:
.
When the Board makes a new ground of rejection, the appellant, within two months from the date of the decision, Can do two things to avoid termination of an appeal (in respect to the new grounds of rejection)
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
Got a question where the Board rejected all claims, some rejections on the basis of a new ground. Applicant decided to reopen prosecution in relation to the new ground for some of the claims by making an amendment to the claims and then request rehearing about some of the other claims.
Question was would examiner examine the claims relating to the rehearing or the amendments or would the Board and in what order.
Answer was: Board will only do the rehearing once prosecution on the amendments have terminated at the USPTO.
04/19/12
I got the question from Matt30 posted here as post 3. I answered the same way he did – board waits for hearing until examiner is finished with amendments.
04/19/12