Q) Notice of Appeal

by patentbar on August 1, 2008 · 51 comments

in Exam Questions

On the 7 months after filing notice of appeal, file the continuation and a request on the application “the authorization to charge for the extension” and the fee. What’s the result? I choose that it is not abandoned.

Is this right?

1 tttgasNo Gravatar August 20, 2008 at 6:10 pm

I think it may or may not be abandoned. No appeal brief was filed, so the appeal stands dismissed. (MPEP 1215)
– Any rejected claims are considered withdrawn.
– Any claims objected to as being allowable except for dependency from a rejected claim is considered withdrawn.
– If there were any allowed claims prior to the notice of appeal, the application will be passed to issue as to those allowed claims.
– If there were no allowed claims prior to the notice of appeal, the application will be considered abandoned.

My understanding is that one can file an RCE prior to the 7 month deadline which will act as a withdrawal of the appeal, but I see no mention of a continuation (MPEP 1215.01).
– The RCE must contain a submission, and a an appeal brief or reply brief is not sufficient.

Now, if the application is considered abandoned (no allowable claims) or the appeal dismissed (some allowable claims) because of failure to reply before the 7 month deadline, there is still the possibility of petition for revival. (MPEP 1205.01) The petition is that under 37 CFR 1.137 and a petition fee is required
Also required is one of:
– an RCE with a submission and fee, or
– a Continuing application, or
– a CPA (design), or
– an appeal brief and appeal brief fee (to reinstate the appeal)

So, does anyone know if a continuation is proper on the 7 month deadline of an appeal brief? Doesn’t seem like the PTO would let you have that extra month (or assumably more since the notice of appeal was filed after the last office action). Otherwise anybody wanting to hold-up prosecution in order to file a continuation after 6 months from an office action requiring reply could just timely file a notice of appeal and have until the 7 month deadline (assuming payment of all extension fees).

2 tttgasNo Gravatar August 21, 2008 at 5:25 pm

Scratch that, John White actually says that people use the notice of appeal to do exactly what I was talking about above: to preserve the right to file a continuation outside of the 6 month window. More specifically he said that people file a notice of appeal (in an after-final response) with no actual intent of appealing, but rather they want to keep the application alive until they get a response from the examiner and then will file a continuation.

3 jkpatentlawNo Gravatar June 12, 2012 at 8:17 pm


4 T.A.No Gravatar March 23, 2009 at 1:02 pm

A brief is required within 2 months of filing the notice of appeal, so just waiting around for 7 months is not an option.

1204 I: “Appellant must file an appeal brief in compliance with 37 CFR
41.37 accompanied by the fee set forth in 37 CFR 41.20(b)(2) within two months from the date of filing the notice of appeal. See MPEP § 1205”

5 T.A.No Gravatar March 23, 2009 at 1:04 pm

The brief can be filed late if an extension is obtained (up to 5 months extra for a total of 7 months).

37 CFR 12.116: “The appeal will be dismissed unless appellant obtains an extension of time under 37 CFR 1.136(a) and files the required appeal brief fee.”

6 DerrickNo Gravatar September 8, 2009 at 1:31 pm

Extensions of time are not automatic for filing Appeal Briefs.The petition for extension of time for filing the Appeal Brief has to be filed before or at the time the Brief is due. you cant wait until seven months and then ask for a retroactive extension.

7 MattNo Gravatar September 24, 2010 at 12:15 am

Appeal briefs DO get automatic extensions. Reply briefs (as well as responses to the board and oral hearings) do not.

8 Big TexNo Gravatar November 17, 2009 at 8:39 pm

I don’t believe that the previous post is entirely correct. 37 CFR 1.136(a)(3) states:

… Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.

According to this the application would not be abandoned if the petition, fee and appeal brief (not applicable in this case because a continuation was requested) were filed 7 months after the notice of appeal.

9 GoJacketsNo Gravatar November 18, 2009 at 3:14 pm

Big Tex is right. The two month period is just the amount of time you have to file while avoiding extension fees. You have up to 5 extra months after those two months, but you have to pay a fee. And yes, I think you can file on month 7, with 5 months worth of extension fees, and still be fine.

But getting back to the main question, I still think you have to actually file the appeal brief. The statute says you gotta file the appeal brief within 2 months of NOA. Even though that can be extended, the reply (whenever it comes) still has to have an appeal brief, right?. The only thing you’re getting yourself when you pay for extensions of time is more time in which to file the brief. So if the question did, in fact, ask if its ok to file a continuation on the 7 month anniversary, i dont see how you can get around the requirement to file an appeal brief.

10 Big TexNo Gravatar November 19, 2009 at 1:53 pm

Regarding the previous post, I am not totally sure that an appeal brief is needed for the continuation application. It depends rather on what the applicant would like to do.

A continuation must simply be filed while the application is pending (before the expiration of the period for appeal or before abandonment, see 211IIB Claiming the Benefit of Nonprovisional Applications — Copendency) and contain a specific reference to the prior application(s). This will in effect create a new application whether or not the original application is abandoned or not. The original application is then either abandoned if the appeal brief is not filed and no claims are allowable or, if certain claims have been allowed, those claims will issue.

More information is needed but I suspect this was not a continuation question but rather, as tttgas hinted at above, a RCE question, which is handled in much the same manner. A RCE, like a continuation application, must be filed before the abandonment of the application. The request to charge fees for the extension of time will keep the application from being abandoned. A RCE will then be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. In order for the RCE to be effective, it must include both a petition under 37 CFR 1.114(c) (this includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability but not simply an appeal brief 1.114(d)) and the required fee in 1.17(e). A petition does not appear to be submitted in the question and once again depending on whether allowed claims exist in the application, the application could go abandoned.

11 SolNo Gravatar April 7, 2012 at 12:27 am

Totally agree with your analysis.

12 BradNo Gravatar December 19, 2012 at 1:50 pm

For clarification, 1.114(c) and 1.114(d) talk of a submission, not a petition.

13 slNo Gravatar February 20, 2010 at 8:15 pm

A question where appeal is filed in parent application A following final rejection but no brief is filed, and a continuation B is filed one day before the seven months to file brief in parent A expires.
Nothing filed in A (extension of time etc) but cover letter for B says “Commissioner is authorized to deduct any fees etc including necessary to make parent application A copending” Question was that is status of B?
a) Copending because filed before notice of abandonment mailed in application A
b) Abandoned because it should have been addressed to “Director” and not “Commisioner”
c) Abandoned because separate applications require separate papers, and therefore request for extension in B cover letter didn’t extend A to make copending
d) Copending if an automatic extension is filed in A before seven months expires
e) abandoned because of some other odd ~~~

I think this is the question and i am still not sure about answer. Any comment?

14 DannyNo Gravatar September 18, 2011 at 11:06 pm

By definition, a continuation under 1.53(d) results in death of parent-thank you John White. Thus, for a continuation to occur, the parent must have been abandoned. So, i think that there was perhaps a bit more to the question or answer choices to fit that tid bit in.

15 DannyNo Gravatar September 18, 2011 at 11:10 pm

Actually, to rephrase, the parent can’t be dead before the continuation occurs. But once it occurs, the parent is then abandoned.

16 SNo Gravatar June 5, 2010 at 6:55 am

I got two or three Appeal questions.

For a couple, the examiner rejects twice, the app goes to the Board. The Board affirms the rejection and also adds a new rejection to it.

What can the 1) applicant do and
2) examiner do?

The answer choice for 1)
1214 I:
If the rejection under 37 CFR *>41.50(b)41.50(b)< rejection and may not include the affirmed rejection.

I forget the answer choice for 2.

17 jkpatentlawNo Gravatar June 12, 2012 at 8:27 pm

If the Board adds a New Ground of Rejection:
A) The applicant can proceed by reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence
B) Request rehearing (this is akin to fling a reply brief if the new ground of rejection comes from the examiner)

This procedure is found in MPEP 1214.01

18 SusanNo Gravatar August 5, 2010 at 10:52 pm

An appeal brief can be filed up to 7 months from the notice of appeal filing ==> 2 months grace period and fees for every additional month up to 5 additional months under 1.36(a). The clock starts ticking when the notice of appeal is received by the USPTO. Maybe folks are getting this mixed up with the time frames and extensions required under the stricter 1.136(b) rule for filing reply briefs, requesting oral hearings, etc. Fun, isn’t it?

19 MattNo Gravatar August 8, 2010 at 12:02 am

The rub isn’t whether the request is too late (you definitely have 2 months + 5 months to file the appeal brief). The question is whether you can authorize payment of the extension of time (for the parent) in the new application.

I think I recall coming across a rule stating that the request must be in the original app and not the continuation, so I think this would result in abandonment.

20 MattNo Gravatar August 8, 2010 at 12:09 am

Ok, I found it in 710.02(e):

“Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.”

I was right; it would result in abandonment. Hope this helps clear things up.

21 HCNo Gravatar August 22, 2010 at 3:52 pm

but the paragraph immediately preceding your quoted paragraph states “To facilitate processing, any petition for an extension of time (or petition to revive under 37 CFR 1.137) in which a continuing application is filed in lieu of a reply should specifically refer to the filing of the continuing application and also should include an express abandonment of the prior application conditioned upon the granting of the petition and the granting of a filing date to the continuing application.” That suggests you can file an extension for you continuation application, submitted in lieu of a reply to the Office Action, to be considered timely.

I think your paragraph is saying that in a situation where two apps are still copending (i.e., parent is yet to be abandoned), a request of extension in the continuation app will not treated as a request for the parent.

22 rainlinerNo Gravatar November 16, 2010 at 6:43 pm

I can’t agree with HC, but DO agree with Matt. The paragragh that HC was quoting means when you file a continuation app in lieu of a reply, the extension of time petition should do the 2 things: 1. refers to the continuation app. 2. contains an express abandonment upon granting of the petition and according of a date for the continuation. That’s all the paragraph intended to mean. And definitely you can not authorize charge of fees for extension in the continuation for the parent app (as specified in the next paragrah that Matt quote).

So I suppose the answer to sl’s post would be C, though I am not sure why D wouldn’t be acceptable. The question mentioned there were not any petition for time extension filed for the parent app A. However, 1.136 a 3) allows you to file a petition for time extension in advance of time (for future replies). Therefore if there were any thing regard to time extension filed during that 7 months’ time in app A, it may save app A from abondonment and make A and B copending.

23 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 3:28 pm

Yes D is the right answer.
Unfortunately all the C answers are quite misleading.
C is a correct statement, however not the right answer.
Meaning that – if the petition for extension is filed in the continuation, then it is not valid, however D provides the cure there and hence is correct.

1. the petition for an extension of time is fairly informal under 1.136, one only need the fee and petition. So if that is taken care of in the parent application
2. the child (in this case the continuation) will be filed prior to abandonment of the parent and thats it – you are good to go.

24 SolNo Gravatar April 7, 2012 at 12:40 am

C is wrong, because App B is born anyway (pending). It is a new application.It is not abandoned (or even examined). A child is living even if the child claimed a dead parent.

As to “copending”, it is essentially asking if App A is still living. Answere is No per Matt’s analysis.

If an EOT is filed in App A, A will be living until the last day of 7 month, and A+B are copending until then unless A is breathing more air for a timely filed appeal brief.

25 SolNo Gravatar April 7, 2012 at 12:41 am

or App continue to live for a proper RCE (in addtion to the Appeal choice of living)

26 SolNo Gravatar April 7, 2012 at 12:44 am

sorry my analysis assume no allowable claims in app A. If there are allowable claims, then A is not abandoned but not pending either. The prosecution is terminated in regard to A (I am not 100% sure here).

27 SolNo Gravatar April 7, 2012 at 12:56 am

To correct my self.

No allowable claims, A abandoned, no copending with B after the last day. B is living alone.
If no claims stand allowed, an application is considered as abandoned on the date the brief was due.

With allowable claims, A is not abandoned after the last day, pending(thus copending with B) until a notice of allowance; thereafter, B is living alone.

If claims stand allowed in an application, the failure to file a brief and consequent dismissal of the appeal is to be treated as a withdrawal of the appeal.

AND If an application contains allowed claims, as well as claims on appeal,the withdrawal of the appeal does not operate as an abandonment of the application, but is considered a withdrawal of the appeal as to those claims and authority to the examiner to cancel the same.

28 SolNo Gravatar April 7, 2012 at 1:07 am

OMG, my brain burt. Sorry again,

If there are allowable claims, after the last day to file appeal brief, and no appeal brief is filed, the appeal is dismissed. App A is still PENDING until issurance. (not notice of allowance). Am I correct this time?

29 YesUCanNo Gravatar February 17, 2011 at 7:00 pm

Although failure to file the brief >and the required
appeal brief fee< within the permissible time will
result in dismissal of the appeal, if any claims stand
allowed, the application does not become abandoned
by the dismissal, but is returned to the examiner for
action on the allowed claims. See MPEP § 1215.04.

Could A be the right answer? It is unclear whether the application automatically become abandoned even if no appeal brief is filed.
And the question did give a specific authorization to pay the 5 month extension fee?

30 LMNo Gravatar February 17, 2011 at 9:23 pm


I feel answer is C

= there is NO automatic extension and one need to file petition as given below:
In the event that the appellant finds that he or she is unable to file a brief within the time period allotted by the *>rule<, he or she may file a petition, with fee, to the Technology Center (TC), requesting additional time under 37 CFR 1.136(a). Additional time in excess of 5 months will not be granted unless extraordinary circumstances are involved under 37 CFR 1.136(b). The time extended is added to the 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.

In addition, as given under previous post of Matt-
Ok, I found it in 710.02(e):

“Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.”

Reading in conjunction, one can draw that one need to file seperate applicaiton/petition for extension and can not be direct to deduct fees in the cover letter of another applicatoin = therefore answer C is correct in my assessment – any thoughts – if no independent extension application in Appeal then appeal abandons and no copendency with other application

31 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 3:14 pm

LM – I respectfully disagree.

1. Automatic extensions are available. That is what 1.136 (a) that you have quoted is. You can request that even after the period for reply (SSP) ends before the statutory period ends, unlike the 1.136 (b) where you have to request it before the period of reply ends.
The reason for that is the fees – are almost double (in the unintentional vs unavoidable or for cause scenarios)
2. Given the above, one can file a petition for an extension for the parent and since the parent application is NOT abandoned at this point
3. File a continuation.

Even after the appeal goes abandoned (see 1205.01 – last 3 paragraphs). one can file a petition to revive and along with it file a RCE or a continuation or an appeal brief .

So to summarize.
1. appeal brief – gets automatic extension 5 mos
2. continuing application cannot have notice for extension of time for parent. The parent must have explicit extension.
3. filing a continuation or a rce after filing for an extension of time on an appeal is actually the technique other people have refered to above where in they can actually buy time to continue prosecution

32 HNo Gravatar March 31, 2011 at 7:38 pm

I think LM nailed it. I was thinking the answer was D until I got to his/her direct quote from the MPEP cautioning that petitions extensions of time must be directed toward the application to which it pertains. I think this is right on the money.

C is correct, imo.

33 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 3:32 pm

Per the above discussion. C is the correct statement.
Nothing prevents an applicant from petitioning that the application have an authorization for extensions of time (in this case it will not be valid to extend time for application A, but nonetheless it is a constructive petition)

But choice D does allow you to get an automatic extension for the parent and allows copendency and hence is the right answer.

34 BobNo Gravatar August 10, 2011 at 3:43 pm

Question: If you receive a final office action on 4/15/2011 and submit a notice of appeal along with a pre appeal response within the 2 months time period, but receive from the pre appeal panel a notice to proceed to the board in 7/15/11. If you elect to file an RCE do you still have to pay an extension of time?

35 EZNo Gravatar September 6, 2011 at 4:47 pm

To me the confusing part is what is implied by the statement in the continuation. It seems to imply that the extension fee is not paid in the parent application.

If so, combining the stimulus with choice (D), the story would be that a petition for an extension of time was filed in the parent, but the extension fee was to be covered by the child.

According to this paragraph in MPEP:
“Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application,”
the extension for parent is not effected. Therefore the parent and the child are both abandoned. So choice (C) seems to be the correct one.

36 SolNo Gravatar April 7, 2012 at 12:25 am

Does everyone forget? or I am not awake?

Continuation is another application. As long as it is filed while the parent is still pending, it is a legimate child.

The continuation was born! It is living the dream of its parent application now

Of course, the parent is DEAD (abandoned) after 7 months if no appeal is not filed.

37 KeenerNo Gravatar May 19, 2012 at 4:17 pm

Has anyone see this question on a recent test?

38 PotentialNo Gravatar June 27, 2012 at 4:19 am

I am so glad no one reported getting this question lately… question fact pattern unclear.

39 helenNo Gravatar July 1, 2012 at 6:54 pm

a man married a wife,after the marriage brokn down,a man driovc the woman.dirove was enter in farvour of the man.thewoman enter notice and grounds of appeal,but she abanoded the apeal.one year later the man married another wife,but died one year after the marriage.tthe 1st wife came back saying she the right wife of the man ,in name that she enteed apeall,

40 Churning Away NoMoreNo Gravatar July 1, 2012 at 8:32 pm

I got a few questions concerning notice of appeal and especially with the BPAI changes. Just reading helen’s “backdrop” of a question just brings back one too many memories of the questions I faced.

In other words, you should know the supplementary documents. KSR, Bilski, BPAI changes, etc.

41 PatentGrrlNo Gravatar July 2, 2012 at 10:24 am

The mypatentbarr gmail account has a nice outline of the new stuff. It’s title AIA, KSR, Bilski.pdf

42 JamesNo Gravatar September 12, 2012 at 12:25 pm

How do I access the mypatentbarr gmail account. . . I’d like to look at the KSR, Bilski stuff

43 MelNo Gravatar October 23, 2012 at 2:28 pm

Can someone provide me with access to this account or these docs?

44 Churning Away NoMoreNo Gravatar July 2, 2012 at 4:30 pm

I remember I got one question that asked me about what happens to claims that were not listed in the appeal brief after jurisdiction of the appeal went to the BPAI. Another one asking about when the BPAI enters their own ground of rejection. I got at least three questions concerning the BPAI rule changes.

45 PatentGrrlNo Gravatar July 3, 2012 at 2:48 pm

Was the date before or after 1/23/12?

46 Churning Away NoMoreNo Gravatar July 3, 2012 at 8:43 pm

I took the exam 06/30/2012

47 PatentGrrlNo Gravatar July 3, 2012 at 9:21 pm

Oh, sorry, I wasn’t clear. I meant was the date of the notice of appeal before or after 1/23/12 (the effective date of the new ex parte reexam rules)?

48 Churning Away NoMoreNo Gravatar July 3, 2012 at 9:35 pm

I don’t remember, but I remember opening the BPAI supplementary materials a few times for a few different questions. Sorry.

49 JamesNo Gravatar September 12, 2012 at 12:27 pm

Is the supplementary stuff(KSA, Bilski, etc.) available in the MPEP or something during the exam? I’ve found a little KSA stuff in the MPEP, but had to google around for Bilski. Am I looking in the wrong place?

50 TheHumanFamilyNo Gravatar January 8, 2014 at 12:33 pm

Had the following yesterday: Notice of Appeal given. Brief follows. Subsequent RCE submitted last., but without fee. I believe answer was “Examiner gets the applic back, but not for further consideration, but rather for allowance/rejections. Herein, the allowed claims become allowed, the rejected and “okay except for form” questions are both cancelled. Passed.

51 Pat13No Gravatar January 9, 2014 at 3:05 pm

@ TheHumanFamily –
What do you mean by “okay except for form” are both cancelled ?

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