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 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.

ANY claim get twice rejected, regardless if on the same ground or different grounds, you can appeal. RIGHT?

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.

“The application IS NOT abandoned/allowed right away.”

When no allowable claims, is the app abandoned upon withdrawl or dismissal? I am not sure.

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).

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.