Recent test takers report question #23 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
23. 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.
ANSWER: (C) is the most correct answer. See MPEP § 1206, specifically the Examiner Note for Form Paragraph 12.69.01 (“This form paragraph should be used only when no supporting reasons are presented in the brief.”). If the examiner disagrees with the reasons given, the reason for disagreement should be addressed in the Examiner’s Answer. As discussed at MPEP § 1208, in the Examiner Note 2 for Form Paragraph 12.55.01 “If the brief includes a statement that a grouping of claims does not stand or fall together but does not provide reasons,using form paragraphs 12.69, 12.69.01 and 12.78.” As discussed at MPEP § 1208, in the Examiner Note for Form Paragraph 12.55.02, if the examiner disagrees with appellant’s statement in the brief that certain claims do not stand or fall together, the examiner explains in the examiner’s answer why the claim grouping listed in the brief is not agreed with and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable. Answer (A) is incorrect. See MPEP § 1206, Form paragraph 12.17. The Appeal Brief was filed less than seven months after the Notice of Appeal was filed. The applicant should be notified of the deficiency and provided an opportunity to request a five-month extension of time. Answer (B) is incorrect. See MPEP § 1206, Form paragraph 12.12. Answer (D) is incorrect. Where the applicant omits the statement required by 37 CFR § 1.192(c)(7) yet presents arguments in the argument section of the brief, the applicant should be notified of the noncompliance and given time to correct the deficiency. See 37 CFR § 1.192(c)(7); and MPEP § 1206, under the heading “Appeal Brief Content,” subheading “7. Grouping of Claims,” wherein it states, “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…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).” See also MPEP § 1206, under the heading “Review of Brief By Examiner,” wherein it states that “if a brief is filed which does not comply with all the requirements of [37 CFR § 1.192](c), the appellant will be notified of the reasons for noncompliance. Appellant will be given the longest of any of the following time periods to correct the defect(s): (A) 1 month or 30 days from the mailing of the notification of non-compliance, whichever is longer; (B) within the time period for reply to the action from which appeal has been taken; or (C) within 2 months from the date of the notice of appeal under 37 CFR 1.191.” Answer (E) is incorrect. MPEP § 1206, under the heading “Appeal Brief Content,” states “Where an appeal brief fails to address any ground of rejection, appellant shall be notified by the examiner that he or she must correct the defect by filing a brief (in triplicate) in compliance with 37 CFR 1.192(c).”
Isn’t this answer about common sense? If the examiner doesn’t agree with the arguments then that doesn’t make for a defective brief because that’s the whole point of the appeal process, each side makes arguments, disagreeing with each other.
When I first did this question, I guessed E (using what I thought was common sense) because I thought the applicant was free NOT to address all the reasons for rejection, but that hasty reasoning was obviously wrong. If they reject for reasons A, B and C and you don’t address B, then even if the examiner agrees with you on arguments for A and C, B still stands as a valid reason for rejection.
Is it a waste of time trying to use common sense? I just started studying and everyone keeps telling me to just memorize the rules but my nature is to try and make sense of things!
1205.02 Appeal Brief Content states: “If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board<."
How is E wrong? Is this answer based on a previous version of the MPEP??
This is from a previous version of the MPEP.
I had the same question, that I posted on another forum and I got the answer, thus:
To get the board to treat them separately, the agent/attorney needs to 1) say the do not stand and fall together and 2) argue each claim they want reviewed separately. That’s really all you need to remember. You need both prongs. In the case of the question, it does not matter if the examiner agrees with it or not. The practitioner did what was necessary and the Board has no reason to return it to him/her.
you would think a question regarding a non-compliant appeal brief would be spelled out under 1205.03 “Non-Compliant Appeal Brief and Amended Brief.” :-/
At least E is correct under MPEP e8r8 – CFR 1.192 got whacked in 2004.
Thanks Overworkked; I about spent all morning trying to find 1.192 in e8r8.
I chose E because I was working with the understanding that if you don’t respond to all arguments in appeal, the matter simply was not appealed, but it wasn’t returned to you.
All these questionable answers are making me nervous about taking the exam. Can we even challenge an answer?
An applicant does not have to Appeal all grounds of rejection by Examiner, only “Grounds of Rejection to be reviewed”. Thus, E would not be correct. Please correct me if I am wrong. See CFR 37 47.37 (c)(vi)
I am taking the test tomorrow and I am still getting hung up on Appeals questions. Sheesh.
Note to self: A Notice of Appeal CAN be submitted unsigned, although not recommended under 1205. I couldn’t find anywhere that said the Appeal BRIEF must be signed or cannot be submitted unsigned in chapter 1200, but I’ll take the answer on face value. The explanation of why B is wrong leaves a lot to be desired. I think I was confusing the lack of needing a signature for a NOTICE of Appeal with the Appeal Brief. Wondering if this will change with recent appeal rule changes?
Of course as soon as I post I find it. Requirement that an Appeal Brief be signed is in 37 CFR 41.67(a)(2) (applicant) and 37 CFR 37.1.68(a)(2) (response). I love appeals!
Can someone explain the last part of the question for me please?
“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?”
Is the question asking: “which of the following situations that USPTO not notify the applicant … and also NOT!! allow him an opportunity to correct the deficiency?”
Or, is the question asking: which of the following that USPTO not notify the applicant, but still allow him an opportunity?
Sorry, English is not my first language… thank you.
The Board should allow an opportunity to correct anything listed in 41.37(c), according to 41.37(d).
I’m sorry but I’m not understanding this. The question implies that there is a scenario in which the USPTO can *NOT* inform an applicant that the applicant’s response is defective and can, further, not allow the applicant to correct the defect (even if, it is implied, the applicant realizes the defect exists without being told). I do not find anything in the MPEP that says that this is possible, and common sense would dictate that it is not. There is not a single instance I can find in the MPEPwhere the USPTO is allowed to find a defect in an application or an applicant’s application or response and (a) not tell the applicant about the defect and (b) not allow the applicant at least one opportunity to correct the defect.
Richard picture this:
You are a new patent examiner working at the USPTO and you receive the application under appeal. You have previously had an interview with the applicant’s counsel and presented your sound arguments on how his claims 5-10 will be rejected. He disagreed and you finally rejected claims 5-10. The applicant filed a notice of appeal stating that claims 5-10 are separately patentable and you advised the applicants counsel how you are going to reject his claims in your examiners answer. You run into the counsel at Kroger in the fresh fruit isle on the way home.. he recognizes you from your video on the Day in the life series on the USPTO website. He tells you to go jump in the lake and inserts several subtle insults about your personal attire and alma mater and says you should try to find a real job.
At work the following day realizing that the board is likely going to reject his appeal, should you advise him that his appeal brief is defective?
At this point even if you wanted to you are not permitted to.