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.
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!”
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).
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.
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.