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.