Comments on: Q) Appeals

By: Bethany

Bethany — Sat, 22 Oct 2011 21:59:46 +0000

Ditto – tons of questions on appeals and also rejections (every 102 and lots of obviousness)

By: sgw

sgw — Sun, 16 Oct 2011 20:26:42 +0000

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.

By: Paul

Paul — Fri, 07 Oct 2011 08:04:58 +0000

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.

By: giaps2

giaps2 — Wed, 27 Jul 2011 00:12:15 +0000

Multiple appeal questions on 07/25/11.

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 18:43:02 +0000

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

By: zao

zao — Mon, 20 Jun 2011 20:17:55 +0000

1205 under appeal brief, under (vii) argument.. search using the phrase… as a group

By: littleyellowduck

littleyellowduck — Mon, 20 Jun 2011 16:21:12 +0000

Thank you so very much. What place of 1200 talks about “claims stand or fall together”?

By: zao

zao — Sun, 19 Jun 2011 22:09:55 +0000

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.

By: little yellow duck

little yellow duck — Sun, 19 Jun 2011 20:40:40 +0000

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.

By: Brett

Brett — Sun, 22 May 2011 00:11:30 +0000

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?