Comments on: Appeal (MPEP 1200)

By: KF

KF — Mon, 24 Oct 2011 05:32:14 +0000

Can someone reconcile the timeline statements in the beginning of Appeal. It says file notice withint 3 months with an optional 3 month extension, and then under the Timing section it says an optional 5 month extension? Is that only an appeal filed for an app that orinated as a PCT?? Thanks!

By: Stephen

Stephen — Mon, 16 Aug 2010 01:16:38 +0000

1207.02 I can’t copy and paste it correctly using Adobe Reader 5.0, but it specifically says the examiner should respond to the appellants appeal with a written statement within 2 months of receipt of the appeal brief.

By: Randy

Randy — Sun, 15 Aug 2010 22:38:09 +0000

“Examiner must answer within 2 months from receipt of appeal brief”

Where in the MPEP does it says this? I do not have a 2-month requirement for the Examiner’s answer and I was not able to find it in MPEP 1207.

By: Stephen

Stephen — Sat, 14 Aug 2010 05:59:46 +0000

I think that is based on revision 3 of the MPEP. Regardless, I am going to pretend like you still have until the end of the time allowed to reply. I don’t trust the USPTO to update the answers to be honest. I’ve read several posts on this site about how the questions that have multiple answers, like A & D for example, aren’t being given credit for currently.

By: Randy

Randy — Sat, 14 Aug 2010 05:21:21 +0000

“Timing –
* Must be filed within the greater of: 2 months of PTO receipt of notice; or time left to reply to the action being appealed”

Can anyone explain why this is correct? My understanding is that the brief must be filed within 2 months of the PTO receiving the notice of appeal, regardless of the time left to reply to the action. This is supported by MPEP 1205.01:

“37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. . . . For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required.”

By: PC

PC — Sun, 14 Feb 2010 16:20:22 +0000

Where does the MPEP discuss the subject matter related to D? Can you copy the claims you are appealing into a continuation application?

By: board of patent appeals and interferences

board of patent appeals and interferences — Fri, 08 Jan 2010 00:41:07 +0000

Can an examiner write a new ground of rejection in an examiner’s answer? 41.69 says he may not, while 41.39 says he may,

I was confused that 41.39 and 41.69 are both titled ‘examiner’s answer’. Apparently, 41.39 concerns examiner’s answer in ex parte appeal, while 41.69 is about inter partes appeal. An examiner can write a new ground of rejection in an examiner’s answer in ex parte appeal, while he may not in inter partes appeal.

By: Emily

Emily — Mon, 04 Jan 2010 17:56:29 +0000

Sorry, copy and paste didn’t work there. Should read “37 CFR…permits the entry of a new ground of rejection in an examiner’s answer mailed on or after September 13, 2004.”

By: Emily

Emily — Mon, 04 Jan 2010 17:55:43 +0000

That must be an old question. According to the MPEP, “37 CFR **>41.39(a)(2) permitsmailed on or after September 13, 2004.” So maybe if the question was from before 2004, C would have been false.

By: Ash

Ash — Thu, 22 Oct 2009 16:01:05 +0000

I came across an Appeal question on Patware.

Which of the following is true?

A. On appeal of a rejection of 10 claims to the Board, each appealed claim stands or falls separately as a result of appellant pointing out the differences in what the claims cover.

B. The 2-month period for filing a petition in 37 CFR 1.181(f) is extendable under 1.136(a).

C. An examiner may enter a new ground of rejection in the examiner’s answer to the applicant’s appeal brief

D. After filing notice of appeal, an applicant is estopped from further prosecuting the same claims in a continuation application

E. When desiring to claim foreign priority, the oath or declaration in a reissue application must claim foreign priority even though the priority claim was made in the parent.

I chose (C), but the answer was (E). The explanation says as per 1.193(a)(2) an examiner PROHIBITS the entry of new ground of rejection in an Examiner’s answer. Can someone please explain this?

What is 1207.03 for then? 1207.03 < New Ground of Rejection in Examiner’s Answer [R-3] ??