Q) Claims stand or fall together (4.00.28p)

by patentbar on August 7, 2008 · 18 comments

in Exam Questions

Reported on the exam: Variant of April 12, 2000 PM – see 28 answer (A) as a concept.

One question reported about the applicant asserting the claims do not rise or fail together, and the Examiner’s Answer stating that they do. Question was, what will the Board do as to the rejected claims?

1206 Appeal Brief
[…] In the absence of a separate statement that the claims do not stand or fall together, the Board panel assigned to the case will normally select the broadest claim in a group and will consider only that claim, even though the group may contain two broad claims, such as “ABCDE” and “ABCDF.” The same would be true in a case where there are both broad method and apparatus claims on appeal in the same group. The rationale behind the rule, as amended, is to make the appeal process as efficient as possible. Thus, while the Board will consider each separately argued claim, the work of the Board can be done in a more efficient manner by selecting a single claim from a group of claims when the appellant does not meet the requirements of 37 CFR 1.192(c)(7).
It should be noted that 37 CFR 1.192(c)(7) requires the appellant to perform two affirmative acts in his or her brief in order to have the separate patentability of a plurality of claims subject to the same rejection considered. The appellant must (A) state that the claims do not stand or fall together and (B) present arguments why the claims subject to the same rejection are separately patentable. Where the appellant does neither, the claims will be treated as standing or falling together. Where, however, the appellant (A) omits the statement required by 37 CFR 1.192(c)(7) yet presents arguments in the argument section of the brief, or (B) includes the statement required by 37 CFR 1.192(c)(7) to the effect that one or more claims do not stand or fall together (i.e., that they are separately patentable) yet does not offer argument in support thereof in the “Argument” section of the brief, the appellant should be notified of the noncompliance as per 37 CFR 1.192(d). Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991).

8TH ED, REVISION 4 No longer has 37 CFR 1.192. Changes made: “removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004” It only says [Reserved] now.

RDS (Dec. 9, 07) 37 CFR 1.192 has moved to 37 CFR 41.30 SUBPART B – Ex Parte Appeals

28. Which of the following is true?

(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a 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 original patent.

28. ANSWER: (E). See MPEP 1414 Content of Reissue Oath/Declaration and 37 CFR
1.175(a) which states that reissue oaths/declarations must meet the requirements of 37 CFR 1.63,
including 1.63(c) relating to a claim for foreign priority. As to (A), 37 CFR 1.192(c)(7) requires
appellant to state that the claims do not stand or fall together. Appellant must present
appropriate argument under 37 CFR 1.192(c)(8) why each claim is separately patentable.
Merely pointing out differences in what the claims cover is not argument why the claims are
separately patentable. MPEP 1206, pages 1200-8 and 9. As to (B), see MPEP 1002 and the
sentence bridging pages 1000-2 and 1000-3. As to (C), 37 CFR 1.193(a)(2) prohibits the entry
of a new ground of rejection in an examiner’s answer. As to (D), continuation may be filed
during pendency of parent.

{ 17 comments… read them below or add one }

1 patentbarNo Gravatar August 7, 2008 at 2:05 pm

37 CFR 1.192(c)(7) requires appellant to state that the claims do not stand or fall together. Appellant must present appropriate argument under 37 CFR 1.192(c)(8) why each claim is separately patentable. Merely pointing out differences in what the claims cover is not argument why the claims are separately patentable. MPEP 1206, pages 1200-8 and 9.

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2 patentbarNo Gravatar August 7, 2008 at 3:56 pm

Someone else on the forum aslo mentioned this question: “One was about the applicant asserting the claims do not rise or fail together, and the Examiner’s Answer stating that they do, and the question was, what will the Board do as to the rejected claims? Who would ever know this?”

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3 chrismcneitNo Gravatar August 7, 2008 at 7:34 pm

Appeal Brief Argument – Analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis would have to address all points made by the examiner with which the appellant disagrees.

Where an argument has previously been presented to the examiner, the analysis would have to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new.

When a ground of rejection applies to two or more claims, the claims may be argued separately(claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group.

Appellant would waive all arguments which could have been, but were not, addressed in the argument section of the appeal brief.

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4 patentbarNo Gravatar September 2, 2008 at 12:39 pm

It has been reported that a question involves an appeal of claim 1
(an independent claim) and claims 2-3 (dependent claims). The judge
affirms the rejection of claim 1, and reverses the rejections of claims 2-3. See MPEP 1214.06, Part II. Claims Stand Allowed. There are a number of examples that can be applied depending on the situation in the question.

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5 patentNo Gravatar February 2, 2009 at 4:25 am

there isnt 1.192 any more.

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6 patentNo Gravatar February 2, 2009 at 4:38 am

i am actually confused by this. Appeal brief is 1205, isnt it? and i cant find the above paragraph any more. besides, i thought the statement isnt required by the appellant. Appellant only needs file argument for the rejection and it all depends on the way appellant argue. say, if they argued separately, then the claim will stand along, or if they only argued one of the group, then claims stand or fall together…

am i understanding this wrongly or this article here is misleading or outdated???

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7 madwoodeeNo Gravatar January 31, 2010 at 6:44 pm

Regarding answer choice (C), see MPEP 1207.03. Also, in the 2003 exams, there is a question that requires you to know 1207.03

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8 MattNo Gravatar August 8, 2010 at 9:51 pm

Since 2004, an examiner’s answer MAY have a new grounds for rejection, so (C) would be correct. Surely any current test will modify the answers to fit the current MPEP 1207.03.

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9 PotentialNo Gravatar May 13, 2012 at 1:58 am

Agreed.

10 PeterNo Gravatar April 10, 2010 at 8:34 am

Just building further on choice (c) (as madwoodee states above in seeing MPEP 1207.03)—this is now a CORRECT answer since new rounds of rejection are allowed in the examiner’s answer. I suppose that in a modified “repeat question”, this could be changed to:

An examiner may enter a new ground of rejection in the examiner’s supplemental answer, except when a supplemental answer is written in response to a remand by the board (which is FALSE–because an examiner may NOT enter a new ground of rejection in the examiner’s answer).

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11 Chemist62No Gravatar April 10, 2010 at 5:40 pm

Does anyone have any suggestion how to search for the claims “stand or fall” together? I do not seem to find it right or just don’r understand the issue.

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12 PeterNo Gravatar April 10, 2010 at 7:08 pm

I think that “stand or fall together” is linked very closely to arguing claims “separately” or “as a group”. When argued “as a group”, then claims will “stand or fall together”.

When doing a search of Chapter 1200, you can search “as a group”, and receive several relevant hits which are closely related to “stand or fall together”

From 1205.02:
Each ground of rejection must be treated under a separate heading. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. The failure of appellant to separately argue claims which appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002). Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number.

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13 Chemist62No Gravatar April 10, 2010 at 7:31 pm

Thank you.

14 SoonrealsoonNo Gravatar February 8, 2011 at 3:46 pm

Examiner’s Answer stating that they do. Question was, what will the Board do as to the rejected claims?

A: Somewhere in 1200
something like,
Board may remand for other purposes other than further consideration of rejection, which includes:
whether to consider IDS, Amend., Affi. after sending appeal brief.
and also make a decision on whether the grouping rejection is proper.

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15 UnipecNo Gravatar January 16, 2013 at 4:54 pm

No one seems to have mentioned this: While (C) is now be a correct answer, (E) is still correct as well. It’s just not found in MPEP 1414 anymore. It is in MPEP 1417.

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16 ENo Gravatar June 10, 2013 at 11:25 am

Unipec is correct.

In MPEP E8R9 1417 Under “PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS NEWLY PERFECTED IN THE REISSUE APPLICATION”, you will see the phrase in parenthesis “(the claim for priority must be REPEATED in the reissue application)”

Regarding answer (C): It is correct, but it only applies to “on or after September 13, 2004”. But just remember that if the examiner issues a New Ground of Rejection, then the appellant/inventor may request to REOPEN the prosecution of the application.

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17 for changNo Gravatar March 25, 2014 at 7:07 pm

Here you go Chang. I promised you this one.

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